Spectralytics v. Cordis: The Jury Black Box; Teaching Away; Commercial Success; and Treble Damages

Spectralytics v. Cordis (Fed. Cir. 2011)

In a post-verdict opinion, the district court wrote that “if this case had been tried to the Court, the Court likely would have found the ‘277 patent invalid [as Obvious].” However, the lower court refused to substitute its view of the evidence for that of the jury. On appeal, the Federal Circuit affirmed and in the process rejected Justice Breyer’s recent call for special jury verdict forms that separate the factual underpinnings of obviousness from the ultimate legal conclusion.

Obviousness: Here, the jury form simply asked “Did Cordis and Norman Noble prove by clear and convincing evidence that claim 1 of U.S. Patent No. 5,852,277 is invalid for obviousness?” and the jury checked “No.”

The black box of jury decision making is difficult to overturn on appeal because the Federal Circuit upholds jury verdicts unless there is no way that the jury’s conclusion could have been drawn from evidence presented at trial. As the Federal Circuit wrote: “for Cordis to prevail it must establish that the jury’s actual or inferred factual findings were not supported by substantial evidence, or that the evidence was not sufficient to support the findings and conclusions necessarily drawn by the jury on the way to its verdict.” In the recent Microsoft v. i4i decision, Justice Breyer wrote in concurrence that district courts should take steps to help juries separate their factual conclusions from the legal conclusions “by using instructions based on case-specific circumstances that help the jury make the distinction or by using interrogatories and special verdicts to make clear which specific factual findings underlie the jury’s conclusions.” In this case, however, the appellate court agreed that the jury had received proper instruction and the defendant did not challenge the appropriateness of the jury verdict form.

Teaching Away: An obviousness conclusion is less likely when the prior art “teaches away” from the claimed invention. In an interesting aspect of the decision, the appellate panel found that teaching-away does not require words per se, but rather the prior art design itself can teach away from an innovation. Here, the patent at issue involved a laser-cutting device for manufacturing medical stents. The prior art “Swiss-style” devices included a vibration damper to improve cutting accuracy. The claimed invention, however, “embraced” vibration in the entire device and instead improved accuracy by rigidly connecting the work-piece to the laser. The court wrote: “the jury could find, based on the expert testimony, that prior Swiss-style machines taught away from embracing vibrations to improve cutting accuracy because all prior machines improved accuracy by dampening vibrations.”

Commercial Success: Patent law allows a patentee (or patent applicant) to present “secondary indicia” of non-obviousness when attempting to overcome arguments against patentability. Here, Spectralytics argued that the commercial success of the defendants infringing products served as evidence that the invention was non-obviousness. The secondary indicia argument rests on an assumption that any obvious advances would have already been identified and accepted by the industry and thus would not lead to any particularized commercial success. Commercial success is most often disregarded by courts because patentees are unable to prove a close nexus between the patented invention being asserted in litigation and a product’s commercial success. Rather, the commercial success could be due to many other factors that might not be related to the patented invention such as marketing, high quality workmanship, technical advances other than those claimed in the patent-in-question, or low prices. Here, however, the court allowed the nexus to be proven based largely upon the defendant’s advertising:

Spectralytics points to the evidence that Norman Noble stated that its new machine was the reason why its product was better than then-competing products, and that Cordis described the new Noble machine as “superior” and “advanced technology,” with “cutting capabilities and precision not attainable” by the prior laser-cutting system. There was substantial evidence whereby a reasonable jury could have found copying and commercial success, and could have weighed these factors in favor of nonobviousness.

Damages: The jury also awarded a 5% royalty for the infringement. The defendants argued that the royalty was clearly too high because it would result in damages that were well above what its costs would have been to use a non-infringing mechanism at the time that the infringement began. The court accepted that argument in theory, but rejected it on the evidence. Holding that, based upon the evidence, the jury could have rejected the defendant’s argument that the alternatives were both available and acceptable. The appellate panel’s affirmance of the damage award may serve as an important counterbalance to recent Federal Circuit cases that demanded more specificity and analytics in damage calculations.

Willful Infringement: The jury also found the patent willfully infringed, but the district court refused to award enhanced damages or attorney fees to the patentee. On appeal, the Federal Circuit vacated that holding and remanded for a new determination as to whether the Read factors support enhanced damages. Quoting its i4i decision, the court wrote: “Although a finding of willfulness is a prerequisite for enhancing damages under § 284, the standard for deciding whether – and by how much – to enhance damages is set forth in Read, not Seagate.” Much like in a criminal sentencing hearing, the appellate court here wrote that the decision on whether to enhance damages after a finding of willful infringement may be based on a wider set of evidence than can the underlying decision of whether the infringement was willful. In particular, the court found that it when deciding whether to award enhanced damages, it is “inappropriate to discount evidence relating to whether there was adequate investigation of adverse patent rights. That is only one of the Read factors, but Seagate did not hold that it should be ignored.”

64 thoughts on “Spectralytics v. Cordis: The Jury Black Box; Teaching Away; Commercial Success; and Treble Damages

  1. 64

    Jacques, in the past, opinions have been critiqued by scholarly articles published months later. Now they are critiqued moments after they are published, usually with a very thorough but often shallow debate. But at times, it might be helpful to counsel formulating a request for rehearing.

    I personally do not pay attention at all to blogs that critique my own work, and there are some. If the judges do not want to be bothered, I can understand why.

  2. 63

    Ancient CCPA Law Clerk
    Kudos to all the commenters on the Patently-O Blog. Clearly, the present clerk staff does not have the collective experience of all you, and thus fuzzy thinking on display in these cases is exposed.
    I would hope that they read the Blog, to get in tune with fundamental distinctions that they obviously overlook.
    While I would like to think that the discussions we had amongst us clerks and the judges was as deep, I sincerely doubt it, so keep up the analysis, critiquing, and suggestions.
    To that end, we should just excerpt the Blog comments, send it to the Chief Judge, and suggest the Court rethink the opinion and reissue it on its own motion. Probably wont happen, but then we can hope the loosing party reads the Blog and gets ideas for a Petition for Rehearing.
    Keep on Blogging, but recommend you go light on the sarcasm and respect the comments of others.

  3. 61

    Although I don’t believe that you intended the subtleties in the hypo, I think it is in fact a great example.

    It teaches away just sufficiently to not anticipate. The inventor has added one limitation (A) to the subcombination (B+C) that was specifically taught away from.

    On the other hand, what if the whole point of adding limitation (A) was to overcome, neutralize, or negate the toxicity of (B+C)?

    In that case, wouldn’t the identification of the specific (B+C) toxicity in the PA teach TOWARD the addition of either (A) or something equivalent to (A)?

    That was why I included the proviso “Assuming no other facts in evidence” in my preliminary conclusion of teaching away.

    It really was an excellent example. Because of its distinct lack of factual detail, it permits ranging discussion. Hats off to you.

    Mooney! What do you think?

    And what the heck happened to patent litigator?

    Ned, I can’t believe you think this area isn’t fertile ground, or won’t have much impact. I’m dealing with not one, but TWO patent applications at this very moment where this is a critical issue, alongside unexpected results.

  4. 60

    in order to teach away under 103, a reference cannot be so specific as to invalidate under 102

    Well, yes. A reference that anticipates simply anticipates, regardless of how much the anticipating reference disparages the anticipated method/article.

    Please, let’s not get into the “anticipation is the epitome of obviousness except when it isn’t” discussion again.

  5. 59

    I don’t know about “specific teaching away.” But yes it is definitely an example of a reference that “teaches away” from a claimed invention. A great example, in fact, if I do say so myself.

  6. 58

    Actual answers to tough question, like the actual law, are not to be expected from the shills.

  7. 57

    Mooney! Where are you?

    Do you still think that your hypo presents a case of a “specific teaching away”?

  8. 56

    I don’t have a beef with the result.

    I am bothered, however, by an expert or a judge characterizing the prior art as “teaching away” from a claimed solution to a problem when there plainly wasn’t any “teaching away.” On the contrary, rigidly attaching the business end of a device to the workpiece being acted upon in order to minimize inaccuracies caused by vibrations is an old solution. Maybe not in this micro-sub-field, but why the fzzk should that make any difference? We aren’t told.

  9. 55

    If I am not mistaken, the case here does not hinge as heavily on “teaching away” as is made out in the comments.

    If one reads the decision as a whole, theright result was obtained.

  10. 54

    Second sentence should be “Nobody questions that the lack of a disclosure in the prior art of a claimed solution to a problem is consistent with non-obviousness of the claimed solution.”

  11. 53

    I agree that when the teaching of a reference is in a decidedly different direction, eg dampening vibration in the workpiece via additional mass or attenuators as opposed to letting it vibrate, but in the same mode as the cutter, then it can be said to teach away. Semantics aside it provides no suggestion or motivation other than to damp vibration. It certainly doesn’t suggest modification to attain the claimed invention.

    You can’t “set semantics aside” because the discussion is all semantics. Nobody questions that if the lack of a disclosure in the prior art of a claimed solution to a problem is consistent with non-obviousness. Likewise, a prior art solution to the problem that differs from the claimed solution is also consistent with non-obviousness.

    But we are talking about a type of evidence of non-obviousness that is more specific than these. That type of evidence is called “teaching away.” I respectfully submit that the Federal Circuit has done a relatively decent job of characterizing when a reference “teaches away” from a claimed invention. To the extent that “teaching away” is now defined or becomes defined to include merely “teaching a different solution that that claimed” or “teaching nothing related to the claim” then the term is meaningless and should not be used unless the intent is to confuse others about what the reference does or does not teach.

  12. 52

    Mark, Mark. There is no quetion that the rigid attachment is clearly a different, nay, perhaps more elegant manner of solving the problem, but it is still NOT a teaching away…

    Please maitain your focus on the primary question here.

    The rigid attachment is described as “advantageous.” Why? Because, as widely taught in the references and in conneciton with the invention, vibrations are dis-advantageous. Ergo, no teaching away.

    If they had said, “we really like vibration and use them advantageously” such as through the use of a flexible member, that would be different. But they, too, are trying to “allieviate” (dampen) vibration as evidenced by the use of a rigid member. That’s right, I said rigid member

  13. 51

    Well, I found a decision on point:

    Celeritas Technologies, Ltd. v. ROCKWELL INTERN., 150 F. 3d 1354 – Court of Appeals, Federal Circuit 1998

    where Lourie wrote for the panel that:

    “A reference is no less anticipatory if, after disclosing the invention, the reference then disparages it. Thus, the question whether a reference “teaches away” from the invention is inapplicable to an anticipation analysis.”

    It would appear that my instincts were correct–a high degree of specificity is undesirable.

  14. 50

    Dampening a vibaration is indeed different from making two objects vibrate synchronously. Quite different.

    I agree that when the teaching of a reference is in a decidedly different direction, eg dampening vibration in the workpiece via additional mass or attenuators as opposed to letting it vibrate, but in the same mode as the cutter, then it can be said to teach away. Semantics aside it provides no suggestion or motivation other than to damp vibration. It certainly doesn’t suggest modification to attain the claimed invention.

    Now the principle may be well known, which is a different kettle of fish entirely, but that was surely not evident from the record recited by the CAFC.

  15. 48

    I saw your further consideration after I posted my comment. We are in agreement. Somebody else’s screw is loose.

  16. 47

    Cy, as I said in further consideration, it will probably come down to written description and enablement. If the black box can be programmed easily to perform the recited functions, I agree there should be no problem. Not so, however, if there is no known way to accomplish the recited functions and none is disclosed.

  17. 45

    More specifically, Max, MPEP 716.01(d) explains it thusly:

    “The ultimate determination of patentability must be based on consideration of the entire record, by a preponderance of evidence, with due consideration to the persuasiveness of any arguments and any secondary evidence. In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). The submission of objective evidence of patentability does not mandate a conclusion of patentability in and of itself. In re Chupp, 816 F.2d 643, 2 USPQ2d 1437 (Fed. Cir. 1987). Facts established by rebuttal evidence must be evaluated along with the facts on which the conclusion of a prima facie case was reached, not against the conclusion itself. In re Eli Lilly, 902 F.2d 943, 14 USPQ2d 1741 (Fed. Cir. 1990). In other words, each piece of rebuttal evidence should not be evaluated for its ability to knockdown the prima facie case. All of the competent rebuttal evidence taken as a whole should be weighed against the evidence supporting the prima facie case. In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984). Although the record may establish evidence of secondary considerations which are indicia of nonobviousness, the record may also establish such a strong case of obviousness that the objective evidence of nonobviousness is not sufficient to outweigh the evidence of obviousness. Newell Cos. v. Kenney Mfg. Co., 864 F.2d 757, 769, 9 USPQ2d 1417, 1427 (Fed. Cir. 1988), cert. denied, 493 U.S. 814 (1989); Richardson-Vicks, Inc., v. The Upjohn Co., 122 F.3d 1476, 1484, 44 USPQ2d 1181, 1187 (Fed. Cir. 1997) (showing of unexpected results and commercial success of claimed ibuprofen and pseudoephedrine combination in single tablet form, while supported by substantial evidence, held not to overcome strong prima facie case of obviousness).”

  18. 44

    Mooney–

    Using your hypo from upthread:

    “For example, an energy bar comprising A, B, and C. Reference 1 teaches a candy bar with A and B. Reference 2 teaches an energy drink with C. Reference 3 teaches that mixing B and C results in the formation of a bitter toxic chemical. Reference 3, therefore, “teaches away” from the combination.”

    Although I haven’t thought about it very hard, I think the hypo turns out to be pretty useful for analysis.

    Let’s consider the concept of specificity.

    Your ref. 3 teaches toxic results from B+C, but the patent teaches B+C+A–so, for instance, it could very well be that the presence of A eliminates the toxicity of B+C alone.

    So, in your opinion, how far does the required specificity go? Must it teach away from A+B+C, or is it sufficient for it to teach away from a sub-combination thereof, like B+C?

    In a legal sense, does the toxicity exhibited by B+C lessen the expectation of success of B+C+A? Assuming no other facts in evidence, I would have to say yes, it does, because the expectation of success must be lessened in the PHOSITA, who is NOT contemplating the effect of the addition of A to the combination B+C.

    That would seem to support my musings above. Furthermore, if there was one more increment of specificity–ref 3 teaching instead the toxicity of adding C not to B but to B+A–that reference would anticipate the patent, which also seems to support my musing that in order to teach away under 103, a reference cannot be so specific as to invalidate under 102.

    Thoughts?

  19. 43

    Would be interested if anyone could cite some better cases articulating the standard for teaching away.

  20. 42

    Someone has a screw loose, all right.

    If the claim limitation was not a means-for limitation under 112, par. 6, then the court doesn’t need to analyze the specification to see whether it meets the requirements of 112, par. 6.

    The defendant apparently chose not to use some other paragraph of 112, probably for good reason, since I’m pretty sure one of ordinary skill in the art would have no trouble assembling the claimed system. Lourie is correct – 112 par. 6 is a special case, and it shouldn’t be applied willy-nilly to claims where the drafter didn’t intend it to apply.

  21. 41

    From now on, I draw a box, label it “black”, fill it with other boxes, draw a few lines, then add labels. From this I add that the black box

    may

    or can be configured to

    or in one embodiment, can

    perform a host of listed functions, never describing any structure for doing those functions, but simply leaving the skill reader the task of invention.

    Sounds like a patent to me.

    Perhaps the problem here is lack of written description and enablement, but that is very close to indefiniteness under 112, p. 6.

  22. 38

    When I think about it cursorily, wouldn’t any situation in which a specific teaching-away existed basically present a case for 102 rejection? I mean, if it had the required specificity to teach away, it should have the required specificity to anticipate what was patentable about the thing in the first place. I know fluffy limitations are added to claims to avoid this situation, but they shouldn’t be allowed IMHO.

    See my hypothetical upthread about the energy bar. I think that’s a specific teaching away and it doesn’t present a case for a 102 rejection.

    On the other hand, while I haven’t looked in detail at the specific claims at issue in In re Gurley, it sounds as if the reference alleged to “teach away” in that case basically described Gurley’s invention, then disparaged it as inferior relative to an alternative. It seems like it should have been a 102 rejection, but perhaps something was missing. Another poorly written Federal Circuit case …

  23. 37

    We have an interesting case today. Inventio AG v. Thyssenkrupp, link to cafc.uscourts.gov

    The lower court held the claims reciting, in effect, a black box for doing an number of functions indefinite because under 112, 6, it disclosed no corresponding structure to perform the functions.

    The Feds overruled, holding that “black box” was structure clearly disclosed in the spec and therefor was not construed under 112, p. 6. They remanded for further consideration and never addressed whether the specification disclosed any structure that could perform the recited functions.

    It strikes me that someone at the Federal Circuit has a screw loose.

  24. 36

    I completely agree with this analysis and so did the Federal Circuit. Contrary to what many patent prosecutors believe, this is the correct way to view teaching away .

    See, e.g., In In re Gurley, 27 F.3d 551 (Fed. Cir. 1994): “A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the
    path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant. The degree of teaching away will of course depend on the particular facts; in general, a reference will teach away if it suggests that the line of development flowing from the reference’s
    disclosure is unlikely to be productive of the result sought by the applicant.”

    Obviously the more stark the distinction, the better the teaching away argument becomes. Typically, I look for comparative opposites.

  25. 35

    The art teaching away is SOME evidence that can be used to rebut an obviousness finding, but it is neither conclusive nor dispositive of the issue in view of the art teaching towards.

  26. 34

    In one way, one could easily reach the conclusion that TEACHING AWAY MUST NOT BE SPECIFIC.

    Here’s how:

    If it IS specific, the issue is not one of unobviousness, but of lack of NOVELTY.

    Remember, “teaching away” is a form of secondary evidence of “non-obviousness”–that is, a positive finding weighs in favor of patentability, as does a positive finding of novelty.

    “Invention” in the USA is BOTH conception and reduction to practice. If everybody does something one way, even if they recognize the possibility of doing it another way and dismiss that second way as ineffective or inefficient, the result of somebody successfully reducing that conception to practice is novel, as long as it has not actually been done before the time of reduction to practice.

    So the evidence goes to novelty–but the question is, can that same evidence ALSO be used against a 103 rejection to rebut a finding of obviousness? This goes directly to the question whether it is possible to have an invention that is novel under 102, but that is obvious under 103–the legal answer to this is “yes”, and the resulting situation is the crack into which the putty of the “obvious to try” doctrine is spread.

    So to my mind, when the so-called “teaching away” is not specific and is instead “generally divergent”, any use of it to rebut a 103 obviousness finding must be framed as a rebuttal of an “obvious to try” holding.

    In practice, that would mean that the PA would have to include statements to the effect that the approach is not worth trying, without necessarily including specific statements of opinion as to WHY or HOW the approach would fail.

    When I think about it cursorily, wouldn’t any situation in which a specific teaching-away existed basically present a case for 102 rejection? I mean, if it had the required specificity to teach away, it should have the required specificity to anticipate what was patentable about the thing in the first place. I know fluffy limitations are added to claims to avoid this situation, but they shouldn’t be allowed IMHO.

    Just thinking out loud in between drafting some boring non-patent-related condo docs…

  27. 33

    You could be correct and I haven’t read the patents in this case, but I agree with the Court’s statement to the extent it accurately describes the patent’s teachings.

    Also would point out that teaching away from the claimed invention is different from the situation where the prior art reference teach away from one another. In the former case, there must be specific language in the claim to teach away from, e.g., in this case, language requiring the presence of vibration. Then teaching away is clear if the reference teaches away from or otherwise disparages the use of vibration, implicitly or explicitly.

    In the case of a combination of prior art references, I think any teaching away can be argued successfully based on their respective disclosures, but this would I think require a stronger showing in the references. And I agree, there must be some language that is absolute in requiring the presence or absence of the thing that is being argued teaches away.

    In any case, if the argument is there, I would err on the side of making it, both in court and at the patent office or appeals board.

  28. 32

    the claimed invention teaches the need to use vibration,

    Except that it doesn’t. At best, the claimed invention teaches a different way of dealing with vibration. The proper argument is simply that a person skilled in the art would have no reason to apply the prior art way of dealing with vibration, because vibration doesn’t really affect the claimed apparatus. That’s not the same thing as teaching away. It’s simply a statement that the two technologies can only be used in the alternative, rather than in combination.

    But even that’s probably not strictly true. I bet there’s still some advantage to also using the prior art dampening technology, unless it can be shown that the claimed apparatus is completely unaffected by any plausible degree of vibration at all.

  29. 31

    Ha!! Vindication. I’ve been saying and arguing this since day one. Teaching away is teaching away and does not matter if it is express or implied. If a prior art reference teaches to avoid vibration and the claimed invention teaches the need to use vibration, then there is a 180 degree distinction there, aka, teaching away. This can be true when a reference teaches away from the invention or teaches away from combination with other prior art references; I’ve found that usually if you have one argument, you have both.

  30. 29

    Jeff–

    Your quandary seems to me to rely upon the assumption that the two situations are mutually exclusive inasmuch as a single obviousness test cannot be applicable to both situations, and I don’t know that that is the case.

    If we weren’t stuck with the precedential value of existing jurisprudence, I KNOW that it would not be the case. However, trying to devise a test that is congrent with the jurisprudence, and which is applicable to both situations, is more difficult–but not, I think impossible.

  31. 27

    I ask because it would seem that the presence of fulcrum and flexible arm between the source of vibration and the needle would introduce some compliance so that you couldn’t really call the attachment of the needle to the turntable “rigid.”

    Good point Jeff. It seems that there must be some element of non-rigidity between the laser and the workpiece in this system. The laser needs to move relative to the workpiece (or vice versa), no? Otherwise the laser could do nothing more than burn one hole in the workpiece.

  32. 26

    The courts need to recognize the anti-flash-of-genius legislative addition in 1952 that sought to answer the question you raise here.

    The 1952 mandate: 35 USC 103(a)Patentability shall not be negatived by the manner in which the invention was made.

    The answer to your question: Reward both paths.

    The pendulum swing of anti-patent rhetoric has seen the 1952 mandate be discarded, and to the point you raise, flash of genius (or seridipity or dumb luck) has returned to taint what is meant by “invention.”

  33. 25

    As a patent prosecutor with a mechanical background, I have been troubled for several years by whether/how the fact of being able to understand your invention from “first principles” should play into obviousness analysis, ever since I was a newly minted attorney and LL.M. student grappling with the competing positions in the pending Supreme Court decision in KSR for a paper I was trying to write. Despite its threat to my livelihood, I somewhat agree with the idea that predictability of the art (which it seems to me is essentially what we are talking about when we say that an invention can be understood from first principles) should play a big role in determining obviousness.

    On the other hand, if you get too carried away with the idea to the point where for something to be a patentable invention it has to demonstrate some hitherto unknown scientific principle, such that no one could have predicted what it would actually do by a “thought experiment,” then the act of “invention” becomes more of a guessing game than anything “intellectual.” To the extent that invention in other fields like pharmaceuticals and bio-tech is an “educated” guessing game, it is only “educated” to the extent that one skilled in the art knows enough to “predict” to some degree of certainty, if not absolute certainty, what the conceived compound/sequence/etc. will *likely* do.

    Does it make more sense to reward the intellectual rigor involved in conceiving new things based on known phenomena, or to reward the rigorous trial-and-error and watchful observation involved in discovering “unexpected” results caused by “new” (i.e., “new” to human understanding) phenomena?

    Or shifting from the justice-based “reward” rationale to the pragmatic, policy-based “incentive” rationale, does one of the two types of activity (discovery of new principles vs. thoughtful application of known principles) require more encouragement from the patent system than the other? Or is it only some magical balance of the two that would be not as likely to occur without the patent incentive?

    To me it seems such a quandary that I’ve practically given up hope of ever deciding on a position, and I just try to do my job based on whatever the courts say.

  34. 24

    Interesting point – were the old tone arms holding the needle not long and slender with a pivotal base joint like in “today’s” record players? I ask because it would seem that the presence of fulcrum and flexible arm between the source of vibration and the needle would introduce some compliance so that you couldn’t really call the attachment of the needle to the turntable “rigid.” Even if that is the case, I’m not saying you necessarily couldn’t come up with a better example; just playing Devil’s advocate.

    BTW, LOL at Manhattan: “I think the court got swept away with the romantic idea of a vibrating embrace.”

  35. 23

    Mark–

    The use of the term “embrace” is unscientific and unhelpful. It has no technical meaning, but it does suggest that some advantageous use was made of the vibration, which it was not.

    The difference in phase, amplitude, and direction of the displacement relative to a single external frame of reference, of both the laser tool and the local area of the workpiece upon which the laser light was incident, were lessened by rigid attachment of the laser tool with the workpiece versus other modes of connection in combination with the vibration damper as taught by the prior art.

    The question of the “elegance” of the solution is not relevant, as you would suggest–the question is instead one of legal obviousness. So-called “floating assemblies” are by no means either new or unobvious, in the abstract. One of their advantages is their better maintenance of tolerance over time, or a superior resistance to drift, less need for re-calibration, less down time, and better productivity for a given tolerance.

    What is up with the term “embrace”????

    This type of language takes us back to very early, or even pre-scientific descriptions of natural phenomena in terms of humanistic qualities or traits, especially evident concerning electromagnetic and thermodynamic phenomena in writings of people like, for example, James Watt.

    They would describe phenomena in terms of traits they understood in their time, and would even try to animate natural phenomena, as if in their mode of action they were exhibiting some sort of volition!

    Although used in a different context, the word “embrace” is totally inappropriate and obfuscatory in this usage.

    Give me a break. Embraced! We need not only a new system, we need new people to populate that new system.

    Embrace! Floridly Victorian, or slothful? YOU be the judge.

  36. 22

    Question: Please tell me what the difference is between “dampening” and “allieviating”

    Answer: THERE ISNT ANY

    QED

    Has nothing to do with elegance or even inventiveness, just teaching away, that’s all. It aint a teching away, and it ain’t an embrace.

  37. 21

    One document in the field teaches away but, all around, the analogous art is teaching towards. Discuss.

  38. 20

    Seems denigrating inventions is your strong suit over reading comprehension:

    The rigid attachment of workpiece fixture 20 to laser cutting tool 2 is also advantageous. It preserves the alignment accuracy even if laser cutting tool 2 is jarred or bumped as fixture 20 moves with cutting tool 2. This further simplifies setup and manufacturing accuracy.

  39. 19

    I don’t think coupling the workpiece to the cutter/laser dampens vibration at all. It just alleviates the effect by getting them on a common frequency or mode.

    I recall seeing similar solutions on old phonograph players, where the tone arm (holding the needle) and the turntable (holding the phonograph) are coupled together.

  40. 18

    The concept of “teaching away” is not nearly so limited as to apply only to combinations.

    Combinations of elements taught in the prior art seems to me to be a fairly broad genus. I’m not sure why you would find that genus to be “so limited.”

  41. 17

    I don’t think coupling the workpiece to the cutter/laser dampens vibration at all. It just alleviates the effect by getting them on a common frequency or mode. Bunch of hindsight biased invention denigrators.

    Seems a rather elegant solution to me.

  42. 16

    “Reference 3, therefore, ‘teaches away’ from the combination”

    The concept of “teaching away” is not nearly so limited as to apply only to combinations. But I would not expect you to pick up on that nuance of patent law Mooney.

  43. 15

    I did too and likewise I also could not find anything in the spec about how this thing supposedly “embraced” vibration.

  44. 14

    I particularly loved the part about embracing vibration.

    Get me outta here!!!!!!!!!!!!!!!!!!!!!!!!

  45. 13

    Here’s one from Newman herself, in In re Francis S. Gurley, 27 F3d 551, 31 USPQ2d 1130 (Fed.Cir.1994):

    “Referring to the statement of inferiority in the Yamaguchi reference, Mr. Gurley argues that Yamaguchi “teaches away” from Gurley’s invention. A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant. The degree of teaching away will of course depend on the particular facts; in general, a reference will teach away if it suggests that the line of development flowing from the reference’s disclosure is unlikely to be productive of the result sought by the applicant. See United States v. Adams, 383 U.S. 39, 52, 86 S.Ct. 708, 714, 15 L.Ed.2d 572, 148 USPQ 479, 484 (1966) (“known disadvantages in old devices which would naturally discourage the search for new inventions may be taken into account in determining obviousness”); W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 1550-51, 220 USPQ 303, 311 (Fed.Cir.1983) (the totality of a reference’s teachings must be considered), cert. denied, 469 U.S. 851, 105 S.Ct. 172, 83 L.Ed.2d 107 (1984); In re Sponnoble, 405 F.2d 578, 587, 160 USPQ 237, 244 (CCPA 1969) (references taken in combination teach away since they would produce a “seemingly inoperative device”); In re Caldwell, 319 F.2d 254, 256, 138 USPQ 243, 245 (CCPA1963) (reference teaches away if it leaves the impression that the product would not have the property sought by the applicant).”

    Of special interest is her contention that teaching away exists “…when a person of ordinary skill…would be led in a direction divergent from the path that was taken by the applicant”

  46. 12

    The claimed invention did not “embrace” vibration, it just dampened it in a different manner, e.g. a direct physical coupling to the workpiece. What a load of hogwash.

    Embracing vibration would mean actually using vibration in some manner – which I can’t see here.

    I h8te that I happen to be on Mooney’s side on this, I just h8te it. Where’s the Lysol?

  47. 11

    Many assertions about what “teaching away” is or is not, but no citations. Here’s one from Rader:

    “A prior art reference may be considered to teach away when ‘a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.’ In re Gurley, 27 F.3d 551, 553, 31 USPQ2d 1130, 1131 (Fed.Cir.1994). General skepticism of those in the art–not amounting to teaching away–is also “relevant and persuasive evidence” of nonobviousness. Gillette Co. v. S.C. Johnson & Son, Inc., 919 F.2d 720, 726, 16 USPQ2d 1923, 1929 (Fed.Cir.1990).” Monarch Knitting Machine 139 F.3d 877. (1998).

  48. 9

    IBP, you are exactly right. Teaching away comes in when the claimed combination is addressed directly or indirectly in the prior art in such a way that one skilled in the art would have understood that the claimed combination could not be made or would not function.

    For example, an energy bar comprising A, B, and C. Reference 1 teaches a candy bar with A and B. Reference 2 teaches an energy drink with C. Reference 3 teaches that mixing B and C results in the formation of a bitter toxic chemical. Reference 3, therefore, “teaches away” from the combination.

    What’s remarkable about Newman’s dead wrong statement of the (non) law is that this is a straightforward analysis that has already been done to the ground. There is no such thing as an “implicit teaching away” of a claimed combination based on the absence of the claimed combination in the prior art. That is NOT what “teaching away” is, as countless of thoughtful and very-well reasonsed CAFC decisions have informed us.

    When you read a case like this, you always wonder: how the hxll did this happen? What should have happened is whoever wrote the brief that argued for this ridiculous concept of “teaching away” should have been sanctioned. Instead, Newman just swallows the bxllcrxp whole and regurgitates it so future m0r0ns can get it wrong.

    Our best hope now would be for the opinion to be withdrawn in part and revised to correct it. Don’t hold your breath.

  49. 8

    I have always thought that “specific teaching away” had to do with the “expectation of success” of a particular approach, and that it therefore had to specifically address said approach.

    If all the prior art does X, is your expectation of success in doing Y affected? Why should it be, especially if you understand your invention from first principles? Certainly both X and Y can each have the same utility, without saying anything about the utility of the other.

    That was the case here. They both had the same utility, but Y did it better than X. Did fixing the workpiece to the frame (X) affect the expectation of success from fixing the workpiece to the laser (Y)? No, unless observers of the prior art can be assumed to have thought that “Since everybody else does it this way, it must be assumed that they tried it other ways and that those other ways failed for some reason.”

    This is an unworkable assumption.

  50. 7

    Oops, hit return too early.

    To finish the thought, I believe specific identification is legally required, based solely upon the oft-repeated phrase “specific teaching away”.

    I agree with Ms. Mooney.

  51. 6

    I think that the “teaching away” discussion is interesting.

    To me, it boils down to whether the “teaching away” is express or implied–that is, if the referent, away from which the reference teaches, is express or implied.

    Newman writes for the panel that ““Teaching away” does not require that the prior art foresaw the specific invention that was later made. More than that, does it require that implementation of the relevant concept be explicitly foreseen?

    Must the referent be specifically identified, or can it be identified by implication? That is, must it be specifically identified at the time of the reference what it is that is being taught away from?

    Logically I don’t think so, although legally I’m not so sure.

  52. 3

    Typo? “the district court refused to award enhanced damages or attorney fees **AGAINST** the defendant”

  53. 1

    Teaching Away: An obviousness conclusion is less likely when the prior art “teaches away” from the claimed invention. In an interesting aspect of the decision, the appellate panel found that teaching-away does not require words per se, but rather the prior art design itself can teach away from an innovation. Here, the patent at issue involved a laser-cutting device for manufacturing medical stents. The prior art “Swiss-style” devices included a vibration damper to improve cutting accuracy. The claimed invention, however, “embraced” vibration in the entire device and instead improved accuracy by rigidly connecting the work-piece to the laser. The court wrote: “the jury could find, based on the expert testimony, that prior Swiss-style machines taught away from embracing vibrations to improve cutting accuracy because all prior machines improved accuracy by dampening vibrations.”

    This ridiculous, circular baloney is completely at odds with years of well-reasoned CAFC jurisprudence regarding “teaching away.”

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