Wyers v. Master Lock

Is "obviousness" a question of law or fact?  The rote answer is that it's both: it's a question of law based on underlying findings of fact.  Drawing that line, however, can be tricky, especially when the jury issues a general verdict.  In addition to addressing this issue, the case discussed below is also noteworthy due to its commentary on KSR on the subject of  motivation to combine. 

Wyers v. Master Lock Co. (Fed. Cir. July 22, 2010)
Wyers involved three patents relating to trailer hitch locks.  Trailer hitch locks are mechanisms used to secure trailers to towing vehicles.  It was undisputed that the prior art disclosed the use of dumbbell-shaped locks for this purpose, so the case turned on the the patentee's modifications to these types of locks.  The following images illustrate the prior art:

Wyers' patents claimed dumbbell-shaped locks with two additional elements: a series of sleeves that could be placed over the center section (the "shank") in order to increase its diameter, and an external seal designed to keep dirt out of the locking mechanism.  The only issue before the jury was whether it was obvious to add these two elements to the prior art locks.

The jury concluded that it was not, and issued a general verdict of nonobviousness. After the district court denied Master Lock's motion for Judgment as a Matter of Law, Master Lock appealed. 

Opinion of the Court
Drawing heavily on KSR, the Federal Circuit concluded that the patents were obvious as a matter of law.  The court considered each of the factual questions before it: whether the art was analogous, whether there was sufficient motivation to combine the reference, and the secondary considerations of nonobvious, and concluded that none favored the patentee.

In reaching this conclusion, the Federal Circuit gave no deference to the jury.  On each issue of fact, the panel found that no evidence supported nonobviousness.  For example, when addressing the issue of whether the prior art was analogous, the court reasoned that it was "clearly within the same field of endeavor as the sleeve patents," and was pertinent as a matter of law.

Particularly interesting, however, were the panel's views on motivation to combine.  While recognizing this as an important aspect of the obviousness inquiry, the panel applied the "common sense" approach outlined in KSR:

"We conclude that it was a matter of common sense to combine the Down patent with the prior art barbell locks in order to arrive at the invention claimed in the ’115 and ’426 patents, and that one of ordinary skill in the art would have had a reasonable expectation of success in doing so."

Slip Op. at 23. Furthermore, "where all the limitations of the patent were present in the prior art references, and the invention was addressed to a 'known problem,' 'KSR ... compels the grant of summary judgment ofobviousness.'"  Id. at 17.  Such an approach is particularly appropriate when the technology is "easily understandable." 

Finally, on the issue of secondary considerations, the court concluded that, even if Wyers had established the requisite nexus, it would have been insufficient:

Moreover, secondary considerations of nonobviousness—considered here by the district court—simply cannot overcome a strong prima facie case of obviousness.

Slip Op. at 28

Concurrence
Judge Linn concurred with the opinion, but wrote separately to warn parties of the dangers of general verdicts.  He noted that although the law permits general verdicts, verdicts involving special interrogatories are encouraged in the obviousness context due to the mixed question of law and fact.  He further noted that, while the court must presume that the jury resolved the underlying factual disputes in favor of the verdict winner when there are no special interrogatories,

"[b]ecause there is no way to determine from a general verdict on obviousness the specific findings of fact made by a jury on the factual questions underlying its verdict, the court in examining the first part of the obviousness question is left to infer whether substantial evidence existed from which the jury could have made the factual findings necessary to support the verdict. Here, the majority examined the record and after considering the factual inferences concluded that support was lacking and that the claims at issue would have been obvious as a matter of law."

Slip op., concurrence at 4-5.  In other words, when a general verdict is give, the Federal Circuit has to attempt to reconstruct the underlying findings of fact.  Here, it could not discern anything that might reasonably have been in dispute, and thus judgment as a matter of law was appropriate. 

Comments

[Malcolm Mooney]

Reason chalks up another victory over the smooth-talking trial lawyer. Hopefully each member of the jury reads the case and learns something.

[fisher ames]

"...However, the fact that Master Lock claimed that its external seal was novel [in its own patent application] bears no evidentiary significance; Master Lock’s patent application should be treated no differently than a patent application by a third party..."

yah... minutiae. just the party raising the defense in the suit.

[IANAE]

just the party raising the defense in the suit.

As the court astutely pointed out, invalidity is a matter of public interest. Invalid patents should be invalidated.

[MaxDrei]

Having quickly skimmed the Decision, I see three successive conclusions of obviousness, as follows:

1. It was common sense. So, obvious.

2. It was predictable. So, obvious.

3. It was common sense. So, obvious.

I think I prefer the EPO approach, of toggling between the "technical features" disclosed in terms in the app and in the prior publication relied upon, and the "technical effects" also revealed both in the app and the cited art.

I prefer it because with it I can predict the outcome.

Thinking particularly about higher tech cases than padlocks, esoteric PhD stuff that is not easy for a lay person to grasp, I don't know whether "common sense" or "predictable" is any improvement on "not abstract". Do you?

[MaxDrei]

IANAE I agree, but for a jury member it might be quite persuasive, that the very party who would have you believe that the claimed subject matter was screamingly obvious was, earlier, trying his hardest to persuade the PTO to recognise it as brilliantly inventive.

I suppose this is the very point that prompted M Mooney's contribution up above?

[Malcolm Mooney]

that the very party who would have you believe that the claimed subject matter was screamingly obvious was, earlier, trying his hardest to persuade the PTO to recognise it as brilliantly inventive.

Stating that something is novel is equal to "trying ... hardest to persuade the PTO to recognize it as brilliantly inventive"?

What am I missing, Maxie?

[smashmouth football]

Max Drei, Malcolm Mooney--

I think the point is that it is unusual that a party in the shoes of Master Lock/accused infringer would not be estopped from making the defense it successfully played here. IANAE explained why that exception to the general rule makes sense--because patent invalidity affects not just (or even primarily) the accused infringer, but rather, the public as a whole.

In other contexts, doctrines such as judicial estoppel might have prevented a party from asserting mutually inconsistent claims--basically, a legalistic "you can't have your cake and eat it too". And note, of course, this is not the same as making mutually inconsistent claims in the same pleading--here, it's more a question of winning in Proceeding One by persuading the factfinder that A is true, and later, before a different factfinder, (but under circumstances that otherwise vitiate against issue preclusion), arguing that NOT A really is true.

[MaxDrei]

That set me thinking Malc.

When one asks for a patent, one does not actually state that one's stuff is novel, does one?

But when a party puts forward a claim for examination at the PTO, we the jury can reasonably conclude that the party was, by that very act, requesting the PTO to acknowledge the claim as meeting the provisions of 35 USC 103. In other words, that party was indeed representing to the PTO, in all good faith, that the claimed subject matter is not obvious.

What am I missing?

[Malcolm Mooney]

I think the point is that it is unusual that a party in the shoes of Master Lock/accused infringer would not be estopped from making the defense it successfully played here. IANAE explained why that exception to the general rule makes sense--because patent invalidity affects not just (or even primarily) the accused infringer, but rather, the public as a whole.

There is also the matter of time passing and other facts becoming apparent.

I can tell you this: there is little doubt that MasterLock made admissions in this case that can and should be used to tank patents in its own portfolio or at least render them unenforceable.

That's why a lot of these cases settle (and the public is asked to pay higher prices for the products by the patentee).

[smashmouth football]

"I can tell you this: there is little doubt that MasterLock made admissions in this case that can and should be used to tank patents in its own portfolio or at least render them unenforceable.

That's why a lot of these cases settle (and the public is asked to pay higher prices for the products by the patentee).

Posted by: Malcolm Mooney | Jul 23, 2010 at 06:45 PM"

I agree. Probably also a big driver of cross-licensing agreements.

[Supreme PHOSITA]

In considering the following item put forth by the court for a PHOSITA, would there ever be an instance when the circumstance would prescribe an answer of "No"?:

Such an approach is particularly appropriate when the technology is "easily understandable."

Well, No duh, to a PHOSITA, the technology is always easily understandable - that's a basic component of being skilled in the art.

[Cy Nical]

But when a party puts forward a claim for examination at the PTO, we the jury can reasonably conclude that the party was, by that very act, requesting the PTO to acknowledge the claim as meeting the provisions of 35 USC 103. In other words, that party was indeed representing to the PTO, in all good faith, that the claimed subject matter is not obvious.

Yes, but the party is not representing that he's done a scorched-earth validity search before presenting that claim. Wyers' argument is just silly. It would be different if the litigation took place before the prosecution of MasterLock's claims. And, as Malcolm suggests, it WILL be different when MasterLock tries to assert its own similar patents. Timing is everything.

[Cy Nical]

Such an approach is particularly appropriate when the technology is "easily understandable."

Well, No duh, to a PHOSITA, the technology is always easily understandable - that's a basic component of being skilled in the art.

Actually Dennis said this; the court didn't. (Not in this case, anyway.) The "approach" at issue is the use of "common sense" in making the legal determination of obviousness. When the technology is "easily understable," then expert opinion (on what a PHOSITA would know, which is a question of fact) is not necessary, and the court can apply its own common sense (and not a PHOSITA's). The Federal Circuit essentially says that the District Court should have done that here.

[Supreme PHOSITA]

"and the court can apply its own common sense (and not a PHOSITA's)"

OH no you don't - the PHOSITA is the player and the common sense belongs to the PHOSITA (even if it is the court deciding what sense the PHOSITA would find common).

[curious]

Does "common sense" differ between those skilled in the art and the ordinary person?

[D Stevinson]

Wow! Obvious?

So I'm wondering why did this next evolution of hitch-pin development take 30-years to make it to market, and do so with such great commercial success? I emphasize the "commercial success" aspect because that is why companies either innovate (commercial success) or resist innovating (commercial failure).

If it is "obvious" that one can make more profit and increase sales by combining two elements - one tends to make that innovation - don't they? And yet it didn't happen for 30-years? Hmmmmm? And when it did happen via Wyers, Master Lock suddenly got religion or "obviousness" and stomped on the market making new found millions with an "obvious" idea that they failed to see for 30-years! It is great to be in America where the small innovators can get picked off by behemoths?

Oh, but today, looking back...yes...yes...yes...it was just soooo obvious that a farm animal well versed in the art of riding in the back of a farm truck looking down at that trailer could have seen it!

Intermittent wipers were obvious too! Oops! No they weren't, but that took 15-20 years for the little guy to win. Maybe there is a movie to be made here too?

[step back]

Does "common sense" differ between those skilled in the art and the ordinary person?

@curious,

There is no such thing as common "sense".

What does exist is common "nonsense".

The first example of common "nonsense" is mass acceptance of the notion that there is such a thing called "common sense" in the first place and that when a first arguer asserts the doctrine of "common sense" it immediately places the second debater in the position of being a drooling id-iota who resides outside the sensibilities exhibited by even the most common (and lowest denominator) of the extant population.

It is "common sense" that the Sun rises in the East and sets in the West.

It is "common sense" that you should not punch a man just below the sternum when he is choking on a piece of food.

It is "common sense" that a piece of light "foam" flung at a metal wing (or ceramic covered wing) can do no harm to the wing, especially when the wing is attached to a mighty vehicle bearing the insignia: "USA Space Shuttle".

It is "common sense" that the Titanic is unsinkable.

Can you think of any more common sen-says like the above?

How about this one? It is common sense that the chemicals called manganese and magnesium sound alike and therefore they must be substantially equivalent to one another (Graver Tank).

[step back]

Oh oh.

Me common sense musta left me.
I forgot this one:

It is common sense that dark-skinned persons are subhuman and therefore must be counted as being only 3 fifths of a light skinned person --US Constitution.

See
http://en.wikipedia.org/wiki/Three-Fifths_Compromise

[ping]

Common sense is neither common, nor makes sense (in hindsight as one steps back for the moment, as the illustrious Step Back illustrates)

Hindsight may be 20/20, but so many people cannot see how insidious hindsight is in the patent arena.

[MaxDrei]

Well, we've been through the way (Bahr) that the USPTO will apply the "abstract" of Bilski. There is just such an easy way for the PTO to apply KSR's "common sense", namely, use EPO-PSA to write a "prima facie" argument that the claimed subject matter is "common sense" and therefore "obvious", and wait for Applicant to rebut it.

EPO-PSA is useful here because it proceeds in a sequence of steps (honed by 30 years of consistent application in the EPO), each one of which being fully in line with the "common sense" of the PHOSITA.

One nice thing about it is that it runs as a "TSM" program, which squeezes out any application of hindsight.

A second nice thing is that it gives the inventor full credit for the description of the invention given on the filing date. It encourages one to be careful what to ask for, and what you say your invention is.

If an inventor is unhappy about the outcome at the PTO, it is free to appeal.

But, having read KSR, and now this case, I cannot see where an appeal court is going to quarrel with the result delivered at the PTO by EPO-PSA, provided of course that the USPTO applies it correctly (including confining the "starting point" prior art reference to something that, in the light of the app as filed, would have been "realistic" to the correct PHOSITA at the correct time).

And it might help with the backlog. Obviousness at the EPO is usually resolved very quickly.

[anonymous]

stepback, the 3/5 Compromise was, as the title suggests, a compromise, not an appeal to common sense. The slave states wanted slaves counted the same as other citizens when it benefited them (i.e. representation in Congress), but didn't want to treat them like actual people for other purposes and certainly didn't want slaves to increase their tax liability. The "compromise" put off the slavery dispute until the Civil War; it wasn't an appeal to common sense.

Your underlying point is valid--judicial appeals to "common sense" often misguided assumptions that "I'm obviously right and most people think the way I do," but the analogy you use undercuts it.

[anonymous]

On a more serious topic, Wyers is a little odd, but perhaps it's the Supreme Court' fault for bringing "common sense" into it in KSR.

[LJ Skies]

Fully agree with D. Stevinson above - if "obviously" this invention was so "obvious," why did nobody come up with it before? Why did the jury not see the obviousness of this "obvious" invention? Can you say "hindsight"?

More generally, does this case mean that jury findings really have no real weight in obviousness determinations? If so, are we back to the eternal question: how can an examiner (who is typically not an attorney) come up with a legal conclusion of obviousness, if factual findings are given no real weight based on this case?

[6]

"Well, No duh, to a PHOSITA, the technology is always easily understandable "

You need to be introduced to some more complex arts. Apparently, you've never touched on one. The tech isn't always "easily understandable" to POSHITA. In fact, that has helped more than one case get approval from me.

In any case, I have a question for you guys: why has the government not required juries to show their factual findings, at least in the patent infringement context?

[6]

"if "obviously" this invention was so "obvious," why did nobody come up with it before"

Maybe they did. How do you know they didn't?

[MaxDrei]

I thought it wouldn't be long before somebody "came up with" that old, old saw:

"if "obviously" this invention was so "obvious," why did nobody come up with it before"

Here, "it" is those ages-old concepts of i)a seal to keep dirt out, and ii) using a shim as a spacer.

Imagine a PHOSITA "coming up with":

"Eureka. That's cracked it. Of course. A seal. And a shim. Now the company can really motor. Quick, call the patent attorney"

Or, imagine management calling by, and "coming up with":

"Anything that you think might be new, tell us, no matter how uninspired you personally think it is. It is not your job to discount it as being "obvious". The lawyers take care of that. Fact is, we need as many patents as possible, if only as defence measures and to reassure our investors. When we discuss the price of our shares, they keep asking me how many patents we have got. We need a patent portfolio".

This, I submit, is why Applicants are "coming up with" requests for the grant of a patent on stuff like dirt seals and shim/spacers. In earlier times, they would have had more common sense, and more integrity, than to bother.

Actually, devoting a big budget to patenting obvious stuff is a rational response to the current behaviour of the investors and the courts, isn't it?

Looking at things that are today, as a matter of technology, totally obvious, it might not be obvious that to implement them today will increase our profits tomorrow.

Things that were, up until the 1990's, obviously not worth filing on have become, today, obviously worth filing a patent application on.

Now if the USPTO were to adopt EPO-PSA, such absurd apps would be weeded out in short order, leading to the reduction of the backlog and the return of something approaching sanity in the judgement what is worth filing on.

But much more valuable than that, it would lead to the filing of apps that disclose and enable what was the "real" invention, in the provision of the dirt seal and the spacer in this specific technical field, leading to the due issue of patents that the courts can presume valid, and then find valid.

But, those of you with a wealth of experience of prosecution of mech. eng. cases at the EPO, argue with me please. I'm here to learn.

[7]

"This, I submit, is why Applicants are "coming up with" requests for the grant of a patent on stuff like dirt seals and shim/spacers. In earlier times, they would have had more common sense, and more integrity, than to bother."

I think it is perhaps less insidious than you think. A company comes up with an improved widget, even if it is a small incremental improvement, and doesn't want a competitor to be able to just copy it. So they file a patent application.

You're an interesting poster, and usually don't drop into the insanity of MM, who thinks every applicant is a cheat, every attorney is a cheat, and that there are always insidious motives for getting a patent. Don't start now.

"Now if the USPTO were to adopt EPO-PSA, such absurd apps would be weeded out in short order, leading to the reduction of the backlog and the return of something approaching sanity in the judgement what is worth filing on."

PSA is just as subjective as 103. You always try to make it out to be some objective standard, that will always get any examiner to the exact same result, but that couldn't be farther than the truth.

I think the EPO does many things right, but PSA is only slightly less of a pile of rubbish than the current case law on 103.

[LJ Skies]

"if "obviously" this invention was so "obvious," why did nobody come up with it before"

"Maybe they did. How do you know they didn't?"

It seems to me that that is turning the law upside down. The burden of proof in this case in on the PTO.

In other words, an applicant is entitled to a patent UNLESS ... and must prove its case, which, it seems to me, it did not. As a judge put it one time in an unrelated situation, a court has extraordinary powers to limit the rights of an individual but should use them very sparingly.

[MaxDrei]

So, tell me, Skies, how much more "sparing" should the PTO be, about spewing out patents which limit not only the rights of an individual but the rights of the entire public (except those licensed to operate within the claims).

How anyway do you "prove" beyond doubt that something, as a fact, is obvious? Obviousness is a matter of law, right?

[El Diablo]

The information we're missing and probably will never know is whether there was any offer to settle the case before going to trial.

Obviousness aside, I am troubled by CAFC ignoring a jury verdict when the trial court's record admittedly lacked the very information needed for CAFC to overrule the jury verdict.

The US patent system is increasingly becoming a place where a small inventor need not apply.

[Sic Semper Tyraneous]

"The US patent system is increasingly becoming a place where a small inventor need not apply."

Exactly the message the anti-patent, huge conglomerates want you to believe.

[Anon]

""...However, the fact that Master Lock claimed that its external seal was novel [in its own patent application] bears no evidentiary significance; Master Lock’s patent application should be treated no differently than a patent application by a third party..."

Wyers should file a reexamination with MasterLocks whole defense highlighted and annotated on MasterLocks similar patent. Sauce for the goose.

[raygrogan]

Best chuckle in this string is Stevinson’s farm animal.

Public interest …
Aren’t we better off with a patent system that encourages inventions like this new hitch lock to make it to market? And for the backers to make a few bucks for their few years of exclusivity? How much was Wyers beating us up for their better lock? If it was commercially successful some people must have thought the improvements were worth the extra buck or two. How is this a bad thing for the public interest?

And if it was obvious for 30 years shouldn’t MasterLock at least have to make some credible statement about why they were holding back?

[Supreme Obviousness]

The best answer as to the real lesson here:

1) Master Lock has better connections
2) Any patent is bad
3) Secondary considerations are secondary citizens in the world of 2)
4) 30 years means nothing because common sense is ageless

[Michael L. Slonecker]

"New, useful, and non-obvious to a person infused with common sense and having ordinary skill in the art to which the subject matter pertains."

I can see, more or less, objective evidence being presented that is directed to "new", "useful", and "ordinary skill in the art". However, the type of evidence one must present regarding "common sense" eludes me. Perhaps, we can avoid the problem by using voir dire to seat juries comprised entirely of PHOSITAs having common sense. In bench trials there would always be the option of filing a motion for recusal.

[Paul F. Morgan]

Since the Supremes used the term "common sense" in KSR not just once but several times perhaps one needs to look at the context?
One clear KSR message was that a POSITA of, say, the art of left handed money wrenches, may be presumed to have enough common sense to look into the public body of varous other twisting or tightening arts to find something to add without necessarily becoming an inventor in the patent sense.
However, it is also hard to disagree with the above suspicion that a jury verdict of "not proven invalid" may be more likely to get reversed on 103, especially after KSR, if the claimed invention is so simple that even a former liberal arts graduate [now a judge] can very easily understand it?

[Paul Cole]

It does not seem, looking at the patent and the cited prior art that any other judgement was appropriate.

However, there is something about the judgement which is unsettling. Perhaps it is the reference to deciding according to common sense: on the whole courts should decide according to the evidence. And when the court decides according to common sense, then there is a level of expertise and judgement which is not made public pre-decision and not tested in cross-examination. Common sense is a virtue which, notwithstanding KSR, is best exercised silently.

[Malcolm Mooney]

Fully agree with D. Stevinson above - if "obviously" this invention was so "obvious," why did nobody come up with it before?

Stoopidest. Argument. Ever.

[Malcolm Mooney]

If it was commercially successful some people must have thought the improvements were worth the extra buck or two.

News flash: "pet rocks".

[Supreme Obviousness]

"... if the claimed invention is so simple that even a former liberal arts graduate [now a judge] can very easily understand it? "

The role of common sense is to the PHOSITA, not to the judge. If the art is simple, then the level of common sense is also simple; likewise, when the art is complex, the level of common sense also changes.

If any judge thinks that the case depends on her level of common sense, that judge is sadly mistaken.

[ping]

D Stevinson,

I realize that you must also appreciate that Malcolm cannot see what even the horse can see because Malcolm is associated with the other end of the animal, away from the hitch.

[Red Monkey]

The problem with obviousness determination is the guy making it sees the answer first, and then the clues (prior art). There should be a way to pose the problem and provide the prior art first, then ask the factfinder to come up with a solution.

Why can't they have one examiner do the search, and then give the search results, and a statement of the technical problem to be solved, to another examiner who hasn't seen the answer yet and ask him what he would come up with based on the search results?

[EG]

This is another case in the Leapfrog vein: mechanical-type inventions are going to have a much more difficult time passing muster under 35 USC 103 in view of KSR International. The result here isn't necessarily wrong (I think the argument made for non-analogous art is pretty weak), but I think it points out the disparity between how mechnical-type inventions are assessed (more "common sense" rulings) compared to chemical-type inventions in determining obviousness under 35 USC 103.

[Confuscious]

Red Monkey,

Sometimes, asking the right question (on which a search would necessarily come from) is half the effort.

[EG]

"However, there is something about the judgement which is unsettling."

Paul,

I couldn't agree with you more. This case "screams out" about the potential danger of using "hindsight" when it comes to mechanical-type inventions. The courts have got to be very careful about using the "common sense" logic of KSR International or we're going to have some rulings that create an intellectual cul-de-sac for determinations under 35 USC 103.

[Oh, now I get it]

I wonder what a Stevens-like compendium on the dangers of hindsight would look like.

100+ pages?

[MaxDrei]

To EG: Did TSM suffer from hindsight?

I ask because EPO-PSA is a specific TSM test, that proceeds in lockstep with the "common sense" of the PHOSITA.

For the life of me, I cannot see what there is in KSR and the newest CAFC caselaw that would prevent a PTO Memorandum to Examiners, to adopt EPO-PSA lock, stock and barrel.

Quite the contrary. In KSR, the obviousness analysis is "Starting with Asano..." and "Starting from Rixon...". In the EPO, it is "Starting from D1.."

[IANAE]

Max: IANAE I agree, but for a jury member it might be quite persuasive, that the very party who would have you believe that the claimed subject matter was screamingly obvious was, earlier, trying his hardest to persuade the PTO to recognise it as brilliantly inventive.

That's why rules of relevance become rules of admissibility when there's a jury involved. If the evidence is persuasive but not relevant, you don't want the jury hearing it at all.

LJ Skies: More generally, does this case mean that jury findings really have no real weight in obviousness determinations?

No, it means that if you want your jury findings of fact to hold up on appeal, you have to specifically ask the jury to explicitly find that fact, rather than simply asking for a conclusory verdict. Because juries unfortunately don't write reasoned opinions when they're asked a yes/no question.

7: the insanity of MM, who thinks every applicant is a cheat, every attorney is a cheat, and that there are always insidious motives for getting a patent.

Not every applicant or attorney is a cheat, but these systems invariably seem to be designed in response to the cheats, to curtail their cheating so it doesn't ruin the system for everyone.

EG: mechanical-type inventions are going to have a much more difficult time passing muster under 35 USC 103 in view of KSR International.

The problem isn't with mechanical inventions per se, it's with mechanical inventions that combine one thing that is known to be a good feature for locks with another thing that is known to be a good feature for locks, to come up with a new lock. That's exactly what the court found obvious in KSR, and it's exactly the sort of thing you'd expect a person skilled in the art to come up with.

[MaxDrei]

IANAE so is it that 2+2 =4 is obvious but 2+2 = 5 is not obvious.

In that case, patentability in mech is just like in chemistry.

But it isn't though, is it? Looking backwards with the benefit of "hindsight" (as those deciding the matter inevitably must), mech eng is "predictable" but chemistry isn't.

So, as EG observes, mech eng now has it tougher than the chemists.

That is, until the PTO adopts EPO-PSA.

[IANAE]

Looking backwards with the benefit of "hindsight" (as those deciding the matter inevitably must), mech eng is "predictable" but chemistry isn't.

I'm not sure you need hindsight to combine two known features of locks into a new lock.

The real question here, I suppose, is what was really invented. Yes, the mechanical arts are more predictable, but that's kind of the point. It's trivial to mix and match mechanical features, and you know in advance that both will still work.

Do we want people getting a patent and a 20-year head start in the market for combining known features of a known product for their original intended purpose? Unless those two features were somehow hard to combine on the same device, it doesn't sound like an invention to me. No matter how many of them they end up selling for reasons they can't link to the novel combination of features.

[EG]

IANAE,

You could very well be right that this case doesn't necessarily evidence a bias against mechanical-type inventions when assessing patentability under 35 USC 103. I just worry that if you get too many cases where mechanical-type inventions are deemed obvious based on "common sense" (which is an easier trap to fall into with mechanical v. chemical inventions), we'll start establishing a "double standard" for obviousness that is inconsistent with what 35 USC 103 says which is that the standard for obviousness is based on the PHOSITA in the involved art, not the type/class of invention involved.

[Paul F. Morgan]

As noted, to decide WHO is to have the common sense [and, perhaps how much?] the Court has to decide the average skill level in the art.

So who is that legally-presumed POSITA for things like this, that are still sometimes invented by someone without any formal education, but these days are more likely to be invented by a professional mechanical engineer emplyed by a company specializing in such products?* It seems to me it has to be the later, as we can't very well have different 103 standards for what is patentable depending on who the particular inventor was.

*[Especially since companies do not want to be sued for accidents allegedly caused by design defects.]

[MaxDrei]

IANAE writes:

"Unless those two features were somehow hard to combine on the same device, it doesn't sound like an invention to me."

which will find resonance in Japan, where the standard text with which your application is refused is:

Obvious: the skilled person would have found it easy to put together the features of the claim.

I really hope we are not going to get out of the USPTO treatment indistinguishable from that at the JPO.

[Malcolm Mooney]

EG I just worry that if you get too many cases where mechanical-type inventions are deemed obvious based

You've been whining about this for 3 years now. Meanwhile, Dennis reported last month that the PTO issued more patents in a two week period than it had ever issued over the same period in the entire history of the office.

[Paul F. Morgan]

Yes, but is there any corelation between the allowance rates of particular PTO art units over 103 vis a vis how well patents from such art units survive patent litigation or reexamination 103 tests?
I doubt it.

[IANAE]

Obvious: the skilled person would have found it easy to put together the features of the claim.

The US just has a different way of expressing itself. They say that both locks are from related fields, and each of the two features is used to achieve its own known advantages, so it's obvious to combine them.

What's your argument against that, exactly? There's no synergistic effect. The sleeve acts as a size adapter, and the seal acts as a seal, just like in the prior art. It's textbook obviousness.

[Davy Jones]

Two thoughts about this decision:
1. Given the court's emphasis on "common sense," I can't wait to read declarations by experts in future litigations on what does and does not constitute "common sense" in a given field.

2. Re the court's pronouncement that "secondary considerations of nonobviousness—considered here by the district court—simply cannot overcome a strong prima facie case of obviousness": this makes no sense, read broadly. For example, one secondary consideration is the failure of others in the art to overcome the technical problem overcome by what is claimed. If the rest of the players in the art failed, sometimes for years and years, a prima facie case of obviousness simply cannot stand up. The court is essentially saying "I don't care if no one else could figure your solution out - it's still obvious." If it were obvious, others in the field would have figured it out a long time ago.

[Michael L. Slonecker]

Might someone be able to explain why costs were awarded to the appellant?

This appears to be a purely "vanilla" lawsuit, and there is nothing in the opinion by the CAFC suggesting that the patentee engaged in any sort of "nefarious" activity.

[IANAE]

Re the court's pronouncement that "secondary considerations of nonobviousness—considered here by the district court—simply cannot overcome a strong prima facie case of obviousness": this makes no sense, read broadly.

I don't know, it depends on what you mean by "strong prima facie case". If the court is saying that a really really convincing case for obviousness can't be overcome by secondary considerations, there has to be a point where that's true.

If Apple makes a plain old computer but makes it blue with their apple logo on the back, and they sell tens of millions of them as a direct and demonstrable result of the blue color, surely that's not enough to say that a color change is anything but an obvious routine modification of the prior art.

[smashmouth football]

" Re the court's pronouncement that "secondary considerations of nonobviousness—considered here by the district court—simply cannot overcome a strong prima facie case of obviousness": this makes no sense, read broadly. . . . Posted by: Davy Jones | Jul 26, 2010 at 01:50 PM"

I think you're right on this point. It's kind of careless and a little sloppy for an appellate court to make such a categorical statement when it's unnecessary for the case at bar. Would have been better opinion drafting to say something like, "secondary considerations of nonobviousness usually cannot overcome a strong prima facie case of obviousness, and that is true here because . . ."

[Ned Heller]

I've taken a look at the Down patent. It does not disclose a sleeve that fits into the holes of the "lugs." Rather, its sleeve simply spans the space between the two lugs. See, Down Fig. 2.

The claim specifically requires the sleeves to fit snugly in the holes. The Fed. Cir. never directly addressed this limitation in its holding. They poo-pooed the patent owners arguments directed to this limitation as "slight." Opinion at 22.

The Jury held the '115 patent not invalid over the Down reference. The Feds disagreed -- based on "common sense." They clearly believed they had more common sense than did the jury.

We now are in a era of judicial tyranny where, without any error of law identified in the jury instructions, the Feds can simply find a patent obvious based on "common sense" when a jury has found the patent not invalid based on "common sense."

Regardless of our agreement or disagreement with the facts of this case, what it tells us is that we are returned to the bad old days pre-Markey where courts ran roughshod over patents, finding them invalid if they, the courts, thought them obvious.

However, let is not blame the Fed. Cir. so much. This mess was created by the Supreme Court itself in KSR.

[Malcolm Mooney]

We now are in a era of judicial tyranny

It's going to be a long week.

[IANAE]

The claim specifically requires the sleeves to fit snugly in the holes. The Fed. Cir. never directly addressed this limitation in its holding. They poo-pooed the patent owners arguments directed to this limitation as "slight."

It's an obviousness argument, not an anticipation argument. The prior art sleeve is for adapting the diameter of the shank to the diameter of the thing that goes around the outside of the sleeve, and this would be a natural extension of that teaching. So to speak.

[Pablo Edwards]

It really was quite obvious how this one was going to end. At least they got it right!

[Ned Heller]

IANAE, it really is a question of who decides. When the issue is common sense, I submit for your consideration, that this is an issue of fact for the jury to decide. The only question for the courts was whether there was sufficient evidence submitted that their verdict was incorrect as a matter of law.

What happened here was NOT THAT. The court simply substituted its judgment for that of jury. This rough justice by the courts was a MAJOR problem before the creation of the Markey court. It was a prime motivating factor behind its creation.

We seem to be repeating history. We seem to learn nothing from the disastrous mistakes of the past. The pre-Markey era was an era of judicial tyranny where very few patents were held valid and where patents were deemed valueless by the smart money.

Thank you Federal Circuit for digging up this buried monster to once again reign terror upon the land.

[Ned Heller]

Malcolm, you naturally, of course, welcome the rule of the elites. It fits well with your oft-repeated view of the frank stu-pidity and ig-norance of the common man as a "matter of law."

[6]

"We now are in a era of judicial tyranny"

Don't judicially tyranize me bro!

[Ned Heller]

6, if you were an inventor, no jury would find your inventions obvious; but every elitist SOB whose opinion of himself is about the same level as yours of yourself, would gladly substitute their judgment for that of the jury just for the sake of making you PO'ed.

[IANAE]

Ned: IANAE, it really is a question of who decides. When the issue is common sense, I submit for your consideration, that this is an issue of fact for the jury to decide.

Oh, absolutely. But when juries are involved you have to make sure to ask the right questions, or you don't have specific findings of fact that the Federal Circuit can use, and then they have no choice but to reject your reality and substitute their own.

If this were an appeal from the detailed reasons of a judge sitting alone, who was meticulous in setting out his findings of fact, I think it would have ended differently.

[ping]

"If this were an appeal from the detailed reasons of a jury, who even half-way meticulously set out the findings of fact, I think it would have ended differently."

Slightly modified, but no less true.

[raygrogan]

Sorry to make facts up ... but IANAE asks a good question:

"They say that both locks are from related fields, and each of the two features is used to achieve its own known advantages, so it's obvious to combine them.

What's your argument against that, exactly? There's no synergistic effect. The sleeve acts as a size adapter, and the seal acts as a seal, just like in the prior art. It's textbook obviousness."

Let's say the old locks without sleeves and seals would only last 1,000 miles because of all the grit that gets thrown at trailer hitches. And that there were the occasional catastrophic situations where a yacht came loose on the freeway (well, maybe not this one, I guess the lock doesn't hold the hitch in place?). And that the new sleeves and seals only added 5% to the cost and now a lock would last "forever". If something only costs a nickel and voila is now worth a dollar or 10 dollars isn't that just as unexpected as a new chemical? And since it is old and easy mechanical stuff, by definition isn't it unexpected if it adds major value?

[Willton]

If something only costs a nickel and voila is now worth a dollar or 10 dollars isn't that just as unexpected as a new chemical? And since it is old and easy mechanical stuff, by definition isn't it unexpected if it adds major value?

I'm almost sure that economic and value-driven arguments would not carry much weight in an obviousness inquiry. If you're going to argue "unexpected results", your argument has got to be based in the science of the thing.

[ping]

Willton,

Is that a policy driven surety, a legally driven one, or a fact-based one?

[Paul Cole]

A good decision for dubious reasons is as harmful as a bad decision.

[MaxDrei]

Yesterday IANAE asked me:

"The US just has a different way of expressing itself. They say that both locks are from related fields, and each of the two features is used to achieve its own known advantages, so it's obvious to combine them.

What's your argument against that, exactly? There's no synergistic effect. The sleeve acts as a size adapter, and the seal acts as a seal, just like in the prior art. It's textbook obviousness."

...and I've been thinking about it overnight. In the interim, others have provided further interesting observations. Now I'll comment.

I see that people suppose they can defend the validity of the claim by pointing to some feature in it and argue that it is responsible for a great technical effect, like longevity, security, ease of un-hitching, or whatever. Now I have no quarrel with that, provided that, already in the app as filed, that feature is picked out and valued for that very reason. It gets unfair to the public, however, when Applicant replies to the PTO Examiner pointing out that Down lacks "shoulder 212" or whatever, and that this very shoulder, which gives the claim novelty over Down, makes the hitch much more secure, long-lasting (or whatever) than the Down hitch. This is an "invention" that was not made till the FAOM arrived.

IANAE, I have no quarrel with textbook obviousness. It is just a gut feeling that, from PTO Examiners upwards, the argument as you recite it can and will be used, to deny patents for contributions to the art that a reasonable patent attorney would assess as not obvious. i can imagine an Examiner asserting, for example, that the results that flow from the claimed combination of technical features do not exhibit any "synergy" but only an improvement in performance that was "predictable".

[Ned Heller]

IANAE, you say that had the jury verdict parsed the issue of obviousness in some fashion the outcome may have been different here. I'm just a bit puzzled. As far as I know the jury was properly instructed. The Down the reference was argued against the '115 patent. The jury held the patent not invalid. The Federal Circuit overturned the jury verdict holding that the claims of the 115 patent were invalid as a matter of law. Federal Circuit said that their holding was a matter of "common sense."

I am frankly at a loss as to how you can say that had the jury specifically stated that in their opinion that the claims of the '115 patent were not obvious over the Down reference the Federal Circuit would not have held the same way.

It is abundantly clear that the Federal Circuit simply substituted its judgment for that of the jury in this case on an issue of fact.

Which raises a very interesting issue: does this case tell us that the Federal Circuit considers the issue of obviousness to be an issue of law and not an issue of fact so that it can substitute its judgment for that of the jury whenever it so pleases? Exactly what is the point of the jury trial then? What a farce!

[MaxDrei]

I await the reply with interest. But, Ned, I had thought it abundantly clear that obviousness is a "mixed" question of fact and law. First we ask the jury what acts the PHOSITA would have found obvious at the time (fact) then the court (and only the court) rules (as a matter of law) on whether the various findings of fact take away the validity of the claim.

If the jury enters a general verdict, the court has it easy, for it is not inhibited from finding the claim invalid for obviousness by a jury finding that some specific act by the PHOSITA was not obvious at the relevant date.

But I'm no US lawyer. Are you saying the appeal court should instead have remitted, inviting a different jury to come up with a decision on specific PHOSITA acts? Or that a general verdict is dispositive of the obviousness issue?

[ping]

Ned,

So quick to jump to the "it's a farce" route.

The driver here is that lack of "captured" facts upon which the jury made their decision. When the appeal came down, the reviewing court had no fact path to follow. It was a mere conclusion. Just as we practicioners like to jump all over Office actions written without facts to back up the examiner's statements, the reviewers here saw nothing to back up the jury's view and were thus free to make up their own minds. Such is clearly not a disregard of what the jury thought, but much more so a "there's no thought" evidenced in the jury decision.

The lesson: don't take shortcuts.

[MaxDrei]

But ping, in a sense, Ned is right, isn't he? If the reviewers find themselves still "free", to make up their own minds on a fact matter of such core importance, because of the failure of the instance below to "capture" of any relevant fact, then it (the course of this litigation, thus far) is indeed a "farce", no?

[LJ Skies]

Malcom Mooney:

"Fully agree with D. Stevinson above - if "obviously" this invention was so "obvious," why did nobody come up with it before?

Stoopidest. Argument. Ever." [Sic]

Insult seems to become the argument when one has no real legal argument.

[IANAE]

Max: It gets unfair to the public, however, when Applicant replies to the PTO Examiner pointing out that Down lacks "shoulder 212" or whatever, and that this very shoulder, which gives the claim novelty over Down, makes the hitch much more secure, long-lasting (or whatever) than the Down hitch. This is an "invention" that was not made till the FAOM arrived.

That's always bugged me about US practice too. It's too easy to throw a laundry list at the PTO and pick out whatever features you need to distinguish over the art once you see the rejection. As you say, that invention was not conceived until after the filing date, and you'd think it would be dubiously valid under 102(f) (not invented by him at the time) or 102(a) (anticipated by his own publication before he invented it).

Max: i can imagine an Examiner asserting, for example, that the results that flow from the claimed combination of technical features do not exhibit any "synergy" but only an improvement in performance that was "predictable".

I don't have to imagine an examiner asserting that, I've seen it done. But at least when you really do have a synergistic effect you can defend your claim with arguments based on your disclosed utility, affidavits of fact, improper combination of prior art references, and all the other means generally available to traverse an obviousness rejection.

Ned: As far as I know the jury was properly instructed.

Properly instructed is a good start, but it's not everything. If you properly instruct a jury, and only ask them "is this obvious Y/N" there are no findings of fact to which the appellate court can defer, even if it wants to. When the facts aren't clear, the Circuit can only either decide for itself or remand for a new trial. Neither result is really satisfying, but the Circuit can't abdicate its responsibility as an appellate court simply because the jury wasn't asked about every single fact.

Now, I'm aware of the Federal Circuit's broad "do-over" jurisdiction in patent matters, but I think they would have at least had to tread more carefully had all the jury's findings of fact been explicit and specific.

Ned: It is abundantly clear that the Federal Circuit simply substituted its judgment for that of the jury in this case on an issue of fact.

An issue of mixed fact and law, if the only determination the jury actually made was as to the ultimate issue in the case.

Ned: Exactly what is the point of the jury trial then? What a farce!

The point of a jury trial is the same as the point of a bench trial. To make findings of fact and then apply the law to them. That works much better when you ask the jury what the facts are than when you tell the jury "if the facts are this way, here's how you apply the law, and come back with a single binary answer the judicial equivalent of an 'alarm limit'."

Max: If the reviewers find themselves still "free", to make up their own minds on a fact matter of such core importance, because of the failure of the instance below to "capture" of any relevant fact, then it (the course of this litigation, thus far) is indeed a "farce", no?

Max, the only other real alternative would be to remand for a new trial on the facts they consider important. That's not particularly satisfying either because of the delay and expense, particularly when the facts were presumably well pleaded by both sides and lacked only a final determination by the jury.

The message here is that appellate courts need good findings of fact at trial in order to exercise a meaningful appellate jurisdiction.

[MaxDrei]

IANAE, that was a nice read.

I'm glad that you agree with me that the US courts have been over-tolerant of sloppy drafting (only belatedly stating what the inventor saw all along as her "invention") for far too long.

As FtF territory looms ever-larger for the common or garden US patent attorney in private practice, perhaps his drafting standards will soon begin to improve?

I thought I had better check "synergy" in the dictionary. I got a surprise. At first blush, it is ambiguous. Here are two meanings:

i) working together

ii) delivering an enhanced performance

I can imagine an Applicant from Europe arguing that i) is enough but an Examiner at the USPTO insisting on ii).

Thinking more deeply about it though, is there really any difference between these two meanings? Putting it another way, "enhanced" relative to what?

I'm coming to the view that the American view of obviousness is very close the the EPO view of what is obvious. The EPO (thanks to the unassailability of EPO-PSA) just gets there quicker, with less shouting and bad temper, and with fewer Affidavits.

[IANAE]

Thinking more deeply about it though, is there really any difference between these two meanings? Putting it another way, "enhanced" relative to what?

The "enhanced" performance is of the whole relative to the sum of its parts. Suppose you put a prior art seal and a prior art sleeve on the same device. If the seal seals just like a prior art seal, and the sleeve adjusts the fit of the shank just like a prior art shank, you have no more than the sum or the parts. Now, if prior art seals simply didn't work well because of a poor fit around the shank (the seal deflected into the intervening space and let dirt in or got pinched and damaged or something), and the combination keeps the lock nice and clean, you'd at least have an argument for synergistic effect.

[ping]

“But ping, in a sense, Ned is right, isn't he?”

Maxie,

Once again you display the stellar logic that I come to expect from a such a blimey.

To say that Ned is kinda right is akin to saying that I am kinda right with the following:

The USPTO is all f_ed up because they have a huge backlog and the reason they have such a backlog is because RWA has still not yet returned the r e d p u m p s to their rightful owner Malcolm.

Now we both know that the Office is indeed f_ed up with a huge backlog – but do you see why any sane person would not trumpet my statement as “kinda right” in any real sense?

“As you say, that invention was not conceived until after the filing date,”
I don’t know about that – it is in the application as filed which means that it is there as of the filing date.

“If you properly instruct a jury, and only ask them "is this obvious Y/N" there are no findings of fact to which the appellate court can defer, even if it wants to.”
Like I got done telling ya.

“The message here is that appellate courts need good findings of fact at trial in order to exercise a meaningful appellate jurisdiction.”
Like I says – don’t take shortcuts.

[MaxDrei]

ping you write:

"I don’t know about that – it is in the application as filed which means that it is there as of the filing date."

We disagree. I think that "it" is not in the app as filed, and IANAE agrees with me.

To disclose an inventive concept, commensurate with the scope of a useful patent claim, ought to require a tad more in the app as filed than a pinpoint description of every nut and bolt in the concept's pinpoint Best Mode.

Why? Because that detailed description, as such, is a description of the "Best Mode" of an infinite number of inventions unclaimed (and undisclosed, as such) in the app as filed.

[Ned Heller]

What is the job of the court in assessing a jury verdict under JMOL? It is to determine whether there was sufficient evidence submitted that the jury could have decided the way it did.

Now before we go one step further, can we all agree to answer to ourselves whether the jury had sufficient evidence to hold the claims of the '115 patent not invalid?

The claim at issue required that a sleeve snugly fit into the hole of the "lug."

The Down patent showed a sleeve that spanned the space between lugs but did not fit into the respective holes of the lugs.

Was there sufficient evidence for the jury to find the claim not invalid?

[IANAE]

Was there sufficient evidence for the jury to find the claim not invalid?

That depends on whether the difference between the claimed sleeve and the Down sleeve is enough to overcome section 103, which I suppose is a question of law. It also depends on what exactly the jury understood the Down patent do teach, which was not at all clear.

If you really want to be technical, the jury should not be finding the claim invalid or not-invalid at all. The jury should be finding a series of facts that the judge decides are relevant to the outcome of the case, and the judge should be the one to make the ultimate conclusion of law as to invalidity, even if that conclusion is unavoidable on the particular facts that are found, and even if that conclusion comes in the form of a conditional instruction to the jury to "find the claim invalid if you find the following facts".

A jury's function is to find facts. Those findings of fact generally determine the outcome of the case, but the jury is not supposed to be concerned with the outcome of the case per se. All we want are the facts, and all they should decide are the facts.

[Ned Heller]

This is where it gets dicey does it not? You clearly suggest that it is the province of the jury to find only the three basic factual inquiries, reserving for the court the issue of obviousness. However, such a procedure would be unique in the law.

Graham vs. John Deere:

While the ultimate question of patent validity is one of law, A. & P. Tea Co. v. Supermarket Corp., supra, at 155, 87 USPQ at 307, the § 103 condition, which is but one of three conditions, each of which must be satisfied, lends itself to several basic factual inquiries. Under § 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined.

...What is obvious is not a question upon which there is likely to be uniformity of thought in every given factual context. The difficulties, however, are comparable to those encountered daily by the courts in such frames of reference as negligence and scienter, and should be amenable to a case-by-case development.

The above passage clearly suggests that the issue of obviousness is a mixed question of law and fact for the jury to decide, just as negligence in the case of tort, or scienter in the case of a crime. You cannot divorce the findings of fact from the question of obviousness. The ultimate legal question, the one for the court to decide is validity, not obviousness.

[ping]

Maxie,

Is your disagreement premised on a point of policy, point of law or point of fact?

Isa got to tell ya – I have the points of fact and law on my side.

Ned - love your quote - especially the first phrase: "While the ultimate question of patent validity is one of law"

[Hagbard Celine]

As someone said above, a poorly reasoned judgement is bad even if the outcome is correct.

Dirt gets into these pesky locks and jams 'em - say, maybe some kind of seal would be a good idea?

We need to make a whole range of these doohickys in different diameters - uh-huh, suppose we make one basic size and a range of adaptors?

You can sympathise with the Fed. Cir. using "common sense" as a short-cut here, but it doesn't mean it's a good thing to do in general.

Their blanket dismissal of secondary considerations is worrisome thouogh. If something looks obvious as a matter of common sense, necessarily with the benefit of hindsight, ("obviously obvious") then to me that's exactly the situation where you need to check any potentially valid secondary considerations to make sure you haven't missed a trick.

[ping]

I think Haggy's on to somethin.

What purpose do secondary considerations actually serve? At what point do we say, "Yep, thems good enough?"

[IANAE]

The above passage clearly suggests that the issue of obviousness is a mixed question of law and fact for the jury to decide,

You can't decide the question of obviousness without a jury because it involves questions of fact, but really the jury instruction more or less dictates the "law" part once the jury makes its determinations of fact. The jury is really only called upon to decide whether the facts are sufficient to trigger the application of the law.

That's why the appellate court needs to know what facts were decided, so it can re-apply the law to them if the court erred in law without having to remand for another nebulous conclusory jury verdict based on a different jury instruction that "the claim is not invalid".

[Malcolm Mooney]

Their blanket dismissal of secondary considerations is worrisome thouogh

This has happened before and nobody here blinked.

I don't see what the big deal is. As IANAE, sometimes obvious is obvious and the secondary considerations are simply not going to be sufficient to rebut the prima facie case.

Deal with it.

[Malcolm Mooney]

Thinking more deeply about it though, is there really any difference between these two meanings? Putting it another way, "enhanced" relative to what?

Enhanced relative to the expected sum of the contributions of the two elements that are being combined to make the invention.

[MaxDrei]

Malcolm, thanks but "expected" sort of begs the question, doesn't it. If nobody had seen the value of the combination at the date of the claim, who is it who was doing the "expecting"?

ping, call it "policy" if it makes you happy. Or "common sense". What the law ought to be, if not what it is already in some places.

As to secondary factors, (commercial success) the English case of the ANYWAYUPCUP for toddlers is instructive. Mandy Haberman invented it then went entrepreneurially into production, then had to deal with infringer Jackel (nice name, that). She won, and commercial success swung it for her. The judgement reveals what it takes in England to win on commercial success. A gem, that decision.

[IANAE]

If nobody had seen the value of the combination at the date of the claim,

The point, I think, is that there must be some "value of the combination". If you just take something that already exists and put a clock in it, each component has its value, but the combination of the two doesn't add anything synergistic.

As to secondary factors, (commercial success)

Patentability over the prior art is not supposed to correlate exactly with commercial success. There has to be a point at which we say that putting two things together because those two things are separately known to be good is not entitled to a patent, otherwise the entire concept of obviousness would have no meaning. There also has to be a point at which we say that selling a lot of the claimed invention (particularly by the defendant) is not determinative, or the case reduces to "I should win because that would get me a lot of money".

Secondary considerations are merely facts to back up the retort of "well, if it was so obvious, why didn't you think of it?" They make good tie-breakers when the parties' experts can't agree on what was obvious at the time, but they must always be secondary. The obviousness inquiry is fundamentally based on the knowledge of a person skilled in the art, not whether the general public thinks the product is nifty.

[Ned Heller]

Well, IANAE, here the level of skill was well within that possessed by the ordinary public. Expert testimony was held not to be required. Ideally, therefor, the jury was well positioned to make the call, particularly if the issue was common sense, as none of the prior art suggested the combination claimed in the '115 patent.

And yet, we have the Feds here declaring that the claimed combination was obvious as a matter of law, essentially saying that the issue should never have gone to the jury -- that the District Court should have decided the issue on summary judgment or at the latest at the close of evidence in response to a JMOL motion.

I used to see it all the time. I have been in courts and have seen it personally. It was common practice in the days of yore -- prior to the formation of the Federal Circuit. The court would hear the evidence presented at summary judgment and would summarily hold the patent invalid -- based on "common sense" which, in the end, is only their own opinion.

That is where we are today with this ruling by the Feds. We are back to the good old days of an unrestrained judiciary, where patent value was at its lowest ebb, the patent system as a whole was not functioning very well, and the need for reform was regarded by all as dramatically necessary.

Congress responded by creating the Federal Circuit.

General Markey then single-handedly reversed the course of history by requiring something more than just the opinion of a court that a patent was obvious. But, it appears, that we are now returned to the "good" old days.

I can only hope the Feds take this case en banc and that, if necessary, the patent owner goes to the Supreme Court. The amount of money involved is not much, but the issues are important.

[IANAE]

And yet, we have the Feds here declaring that the claimed combination was obvious as a matter of law, essentially saying that the issue should never have gone to the jury

I think that's the part that irks me about this decision. I don't mind the Federal Circuit doing its best to sort out what facts are necessarily implied by the jury's conclusory decision, but it seems a little much for them to say that this was never an appropriate issue to put before the jury at all.

Still, I don't think they would have so flippantly substituted "common sense" for the sense of a dozen commoners if they were stuck with particular findings of fact that, for example, a particular feature was not taught or suggested in a particular prior art reference. It's far easier to re-decide a question of mixed fact and law as a matter of law than it is a question of fact.

[SteveW]

Let's say that synergistic effects are a requirement for assemblages of prior art parts.

Assemblages of prior art parts do only what they do, there is no truth to the "whole is greater than the sum of the parts," because the thing is the sum of the parts. Thus, what is really being patented is the idea that the sum of these parts is greater than what the sum of these parts would have been thought to be. Accordingly, any synergistic argument to avoid a determination of obviousness for an assemblage of prior art parts is really just patenting an abstract idea, correct?

[ping]

SteveW,

No - the patent is for the summed parts. The abstract idea of synergy is fighting the abstract idea of obviousness.

Fighting fire with fire.