by Dennis Crouch
If you break it down far enough, every invention is simply a combination of known materials or steps. In that frame, the obviousness inquiry fundamentally becomes a question of whether the combination of known elements was within the toolkit of an ordinary artisan. This is a flexible analysis (KSR) with the PTO and courts typically looking for a “motivation to combine” the prior art teachings that would have a “reasonable expectation of success.”
The Federal Circuit’s recent decision in Axonics, Inc. v. Medtronic, Inc., No. 2022-1451 (Fed. Cir. July 10, 2023) zeroes in on the motivation-to-combine analysis. In Axonics, the court ruled that the obviousness analysis must focus on the motivation to combine references to reach the claimed invention, not motivation to combine for some other purpose described in the prior art. The basic outcome is that it will prevent overly narrow framing of the motivation inquiry by the PTAB.
Medtronic has two patents that cover medical leads for nerve stimulation. Importantly for the case, although the claims appear broad enough to cover trigeminal nerve stimulation, they are not limited to that type of stimulation. Axonics IPR challenged the claims as obvious based upon two key prior art references: Young and Gerber. The Young patent relates to a lead for stimulating the trigeminal nerve, while the Gerber patent relates to a lead with a plurality of electrodes. Together, the two references taught all of the limitations found in the Medtronic claims. However, the PTAB concluded that an artisan would not have been motivated to combine the references. The PTAB started with Young’s focus on the trigeminal nerve stimulator, and found that the proposed addition of Gerber would fail to work for trigeminal nerve stimulation based on the anatomy of that area.
On appeal, the Federal Circuit found that the PTAB improperly limited the Young-Gerber combination analysis to what would work in the trigeminal-nerve area, which is a requirement of the Medtronic patents’ claims. The proper inquiry should have been whether the relevant artisan would be motivated to make the combination to arrive at the claims’ actual limitations, which are not limited to the trigeminal-nerve context. The Federal Circuit also found that the PTAB erred in its definition of “the relevant art” as limited to medical leads for sacral-nerve stimulation, as the Medtronic patent claims make no reference to sacral anatomy or sacral neuromodulation, and they cannot be properly construed as so limited.
This holding indicates that the PTAB cannot improperly narrow its view of the relevant art based on specification details not reflected in the claims. Rather, the relevant art must align with the scope of the claimed invention. The decision also underscores that the motivation analysis must focus on combining prior art to reach the claimed invention, not suitability for a specific context described in one reference.
I’ll note here that Judge Taranto justifies the decision with a statement about how the patent is not directed to sacral nerfes:
No claim of the two patents either mentions or is limited to sacral nerves. The same is true of the titles of the two patents.
I’ll note here that the rest of the patent is ripe with a focus on sacral nerves. As an example, the following comes from the background section:
This invention relates generally to a method and apparatus that allows for stimulation of body tissue, particularly sacral nerves. More specifically, this invention relates to an implantable medical electrical lead having at least one stimulation electrode adapted to be implanted near the sacral nerves for stimulation of a bundle of sacral nerve fibers and a fixation mechanism for providing chronic stability of the stimulation electrode and lead. Moreover, this invention relates to the method of implantation and anchoring of the medical electrical lead electrodes in operative relation to a selected sacral nerve to allow for stimulation.
Id.
On remand, the Board will need to take a fresh look at the Young-Gerber combination. But, it isn’t clear that the result will be obviousness since we still need to know whether someone of skill in the art would have some reason to believe they could to take the trigeminal nerve stimulator disclosed in Young; and combine it with plurality of electrodes disclosed in Gerber to make a non-trigeminal version covered by the claims.
= = =
What is the invention? Traditionally, an invention requires reduction to practice; an actual embodiment. And, although we have long permitted patent filings as an alternative, the law sees that as merely a constructive stand-in for the real thing. At the same time, we have all heard the patent law maxim that an invention is defined be the scope of the claims. And, in 2011 the patent laws were finally amended to reflect that paper-focused framework by focusing attention on “the claimed invention” rather than just “the invention.” The amended law now requires an analysis of the “the differences between the claimed invention and the prior art” and whether “the claimed invention as a whole would have been obvious.” This was a subtle change, but one that fundamentally shifted focus from the historic framework of an invention that required reduction to practice toward the paper version that defines the invention in terms of what is claimed.
The difficulty for Medtronic in this case is that they took the original invention that focused on sacral nerves and decided to expand out the scope beyond that reach. (The company holds other patents in the family that do focus on sacral nerve stimulation).
This comment is perhaps too late to win any sort of useful response from other posters but I will try, nevertheless.
I baulked at one particular sentence in the decision, where it states that the proper obviousness enquiry is as set out in Allied Erecting and is whether a skilled artisan would have been motivated to combine the teachings of the prior art references “to achieve the claimed invention”. For me, immersed for decades in the EPO’s problem-solution approach, the enquiry, so stated, with that specific motive, is nonsensical because it bestows on the artisan hindsight knowledge of “the invention”. At the EPO, its rigorously prescriptive TSM enquiry is effective, expressly to exclude knowledge of the invention, obviously for the express purpose of shutting out from the enquiry any taint of hindsight.
Can anybody here convincingly defend the Allied Erecting approach to obviousness, or show me how I am misunderstanding it? I do hope so.
Teaching you — on most anything — is a tall order, as you have repeatedly shown an inability to allow horses brought to the well to actually drink from that well.
OK. No enthusiasm any longer to school/lecture/teach me. Too much like hard work for no reward. Better things to do with your time. I understand.
But I still think that the test “to achieve the claimed invention” is unfair, absurd.
Suppose D1 discloses ABC in combination and D2 discloses D. PTO tells you your claim to ABCD is obvious because the skilled person seeking to achieve ABCD would find it obvious to combine ABC with D. Well, if that is the court-ascribed motive well then of course the skilled artisan would find that (unless the D1 or D2 docs were “teaching away”) wouldn’t they. Duuuuuh!
LOL – you have an unerring knack of getting things wrong.
So too, here, as my “school/lecture/teach” is NOT the sole aspect of my interactions with you, and thus, “too much like hard work” is just not apt.
As to your immediate ramblings, these points are indeed (already) covered in my comments concerning the differences between prior art that may serve as 102 art and prior art that may serve as 103 art (these are not merely a function of appearing in a single item of art), as well as my comments directed to the difference of the entire phrase of “motivation TO COMBINE” as opposed to mere motivation.
These posts of mine have been made freely (and generously) for most all to learn. These are NOT anything merely directed to you, and there certainly is joy from knowing that many DO learn from my posts (even as those that tend to be anti-patent leaning OFTEN attempt to portray the opposite).
For me, immersed for decades in the EPO’s problem-solution approach, the enquiry, so stated, with that specific motive, is nonsensical… Can anybody here convincingly defend the Allied Erecting approach to obviousness, or show me how I am misunderstanding it?
No one is going to defend the U.S. obviousness standard convincingly because the U.S. obviousness standard is objectively inferior to the EPO standard. As I have mentioned elsewhere, the best thing the Congress could do for patent policy would be to replace the current text of §103 with the text of EPC Art. 56, and include a revisers note that the intention of this change would be to accord U.S. law with the obviousness jurisprudence of the EPO. The U.S. and the rest of the world would be a deal better off if everyone copied the EPO’s problem-solution TSM approach.
“5”6…
Drum Kool-Aid at its finest (this month the trampling of the southern border is relatively down).
link to theverge.com
Exactly! If one were looking forward from the references, would they combine the two?
“However, the PTAB concluded that an artisan would not have been motivated to combine the references.”
Most of you know how I feel about the determination of the level of ordinary skill in the art. Examiner’s almost never determine skill level, and the PTAB always gives the Examiners a pass during ex parte review by jumping on the “inherently determined” bandwagon.
In my experience, when it comes to post grant proceedings, the PTAB simply splits the baby. If both sides proffer a level of ordinary skill, the PTAB (without any analysis or reasoning), simply states that the level of ordinary skill is in the middle between what each side proffered. When only one side sets forth a level of ordinary skill, they seem to adopt it outright on the basis that the other side did not contest the proffered level of skill.
In the end, it’s still a sham.
Another decision that “the name of the game is the claim” [except for design patents].
The proper inquiry should have been whether the relevant artisan would be motivated to make the combination to arrive at the claims’ actual limitations, which are not limited to the trigeminal-nerve context.
Such a position ignores that one of the references was specifically directed to the trigeminal-nerve context.
I liken the issue to the following hypothetical.
Reference A teaches: G in X context.
Reference B teaches: H in Y context.
Claimed invention is: G and H without limitation as to context.
The Federal Circuit is saying that the determination of obviousness should be made regardless of the context because the claimed invention does not include the context. However, that is classical hindsight reasoning.
One skilled in the art does not have the benefit of the claimed invention before him or her. Rather, one skilled in the art has Reference A and Reference B before him or her. In that instance, one skilled in the art notes that teaching G in Reference A is limited to X context, and teaching H in reference B is limited to Y context. There is no motivation to add teaching H to the teachings of Reference A because H is for a different context than the context of A. Similarly, there is no motivation to add teaching G to the teachings of Reference B because G is for a different context than the context of B.
To add G and H together in a context (i.e., not context X or Y) not contemplated by either Reference A or Reference B is not obvious. The only way to get there is by hindsight reconstruction — not by trying to determine what would have been obvious to one skilled in the art.
As an aside, In re Bigio, 381 F.3d 1320, 1325-26 (Fed. Cir. 2004), stated the following:
This test for analogous art requires the PTO to determine the appropriate field of endeavor by reference to explanations of the invention’s subject matter in the patent application, including the embodiments, function, and structure of the claimed invention. See Wood, 599 F.2d at 1036 (confining the field of endeavor to the scope explicitly specified in the background of the invention); see also Deminski, 796 F.2d at 442 (determining that the cited references were within the same field of endeavor where they “have essentially the same function and structure”).
Bigio also referred to the “claimed invention” when determining whether a reference qualifies as prior art. In that, Bigio cited Wood with approval in order to confine the field of the endeavor “to the scope explicitly specified in the background of the invention.” This is exactly what the Board did in Axonics (see Slip at 14) (“The Board relied on the ‘Field of the Invention’ paragraph”). I’m not sure if Bigio was cited in this case. Regardless, I would argue that there is a conflict between these Federal Circuit’s decisions.
Your notion of “in context” is a critical distinction between art that may serve as prior art for 102 purposes and art that may serve as prior art for 103 purposes.
Some (not you of course) like to pretend that 103 art is merely piecemeal 102 art (with one path being the omission of the portion of “to combine from the full phrase of “motivation to combine).
This sets up a ‘can-combine-anything-1-with-anything-2’ based solely on a benefit of anything-1 OR a benefit of anything-2.
That being said, I would distinguish your point with noting that consideration of “a problem to be solved” extends the analysis beyond a strict view of analogous arts.
(This just means “context is a little broader than the points you provided)
It’s possible that POSAs would use teachings from context G in combination with teachings from context H. We simply can’t say as a matter of law that the two cannot mix, and doing so would violate KSR. If Bigio purported to exclude prior art teachings simply because they were outside the art, it is wrong and inconsistent with KSR.
If Bigio purported to exclude prior art teachings simply because they were outside the art, it is wrong and inconsistent with KSR.
Bigio was applying the classic non-analogous art test, which looks at (i) whether the prior art is within the field of endeavor and lacking (i) looks at (ii) whether the reference is reasonably pertinent to a known need or problem in the field of endeavor.
This is the exact language from KSR: “Under the correct analysis, any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.”
KSR does not allow one to exclude the field of endeavor as part of the analysis.
As an aside, the way the Board/Federal Circuit usually gets around this analysis is by (overly) expanding what counts as the “field of endeavor.”
Analogousnous was never addressed in KSR yet the MPEP cites to KSR that the motivation to combine “problem” addressed in KSR addresses the second prong of the analogousness test.
MPEP 2141.01(a)’s “interpretation” of KSR wrt to analogous prior art has been revised in the most recent edition. But I agree that KSR never dealt with the question of whether any of the references were analogous prior art (all of the references were clearly from the same field of endeavor as the claimed inventions) and KSR should not be discussed at all in the context of analogous prior art. That being said, the edits to the MPEP in the most recent revision are a step in the right direction.
Thank you for bringing that to my attention.
The EPO problem-solution approach does a good job avoiding the sort of hindsight reconstruction that you are (rightly) decrying. The “ordinary artisan” does not combine disparate elements from the prior art with wild abandon for the sheer pleasure of making novel combinations. The “skilled artisan” is always trying to solve a particular problem that one might encounter as of the filing date with solutions available as of that date. If you cannot tell a just-so story about a particular, concrete problem that one could have encountered as of the filing date—with a cogent explanation of how the proposed combination solves that problem—then your “motivation to combine” argument is just hindsight reconstruction.
Ah Greg, so much to discuss, in reply to your comment. I agree with you that the notional skilled person lacks any “motivation to combine” everything that in the state of the art is crying out to be “combined”. The skilled person is not (yet) an automaton or a monster-Hoover AI.
I agree with you (and who doesn’t) that it is proper to impute to the skilled person an urge to solve a “particular” problem. But which specific problem would that be then? Is it perhaps the one which the drafter of the patent application flagged up, in the specification filed with the claims that define “the invention” in the patent application as filed. It can’t be any other than that, can it? As a professor pf patent law in England tells us in his book on drafting, one establishes in the claim the novelty of the invention whereas the specification is what establishes whether or not the claimed novel combination of elements is inventive.
After 40+ years of refinement, the EPO’s absolutely prescriptive and rigorous TSM problem-solution approach leaves no room at all for the Office or the court to be swayed in its analysis of patentability through its (unavoidable) full hindsight knowledge of the invention.
Some people are suggesting that this case is a sign that EPO-PSA is going to be the next big thing in the USA. Is that so though. What do you think?
Aside from your usual and obvious EPO Uber Alles pandering, let’s take a closer look at your statement of:
“The skilled person is not (yet) an automaton or a monster-Hoover AI.”
Don’t be so sure of that MaxDrei:
link to nextbigfuture.com
That was as of January of this year, and no one has heeded Musk and company’s call to halt development, so TODAY, there IS – extant – that self-same “monster-Hoover” AI.
This IS the State of the Art.
Today.
Now, one may quibble whether the non-real person of the legal fiction of Person Having Ordinary Skill In The Art should reflect State of the Art (and thus include the also-non-real “person” of AI, but one does not get to simply ignore the facts of what IS the State of the Art.
Today.
Indeed, anon, the definition of the skilled person and what they are deemed to know is increasingly problematic. Under the EPC, for example, the notional skilled person is deemed to know the entire state of the art, world-wide and in any language. That might be true of an AI but cannot be true for any real person. But, hey ho, if we all want the obviousness enquiry to be objective rather than subjective, we have to go down that route, right?
At the heart of the obviousness enquiry is, for me, not what the notional skilled person “could” have combined but, rather, what they “would” have combined. That is an easy question to answer under the EPO’s prescriptive obviousness enquiry. I have no idea though how to begin, under US law, to distinguish what the skilled person would have done from what they could have done.
“notional” …?
Is that your way of agreeing with me that the Person Having Ordinary Skill In The Art is (also) not a real-person, but rather a legal fiction?
Well of course Big Tech demands that government set limits, immediately, because that absolves them of any responsibility for what happens next in the AI space. Instead, it will all be government’s fault.
“If you cannot tell a just-so story about a particular, concrete problem that one could have encountered as of the filing date—with a cogent explanation of how the proposed combination solves that problem—then your ‘motivation to combine’ argument is just hindsight reconstruction.”
I will give this a +0.95 because it should say “…concrete problem that one WOULD have encountered as of the filing date…”
A little wobbly on the dismount, but otherwise spot on.
Perhaps it is because of my daily acquaintance with a very different could/would distinction (under the EPO’s problem-solution approach to obviousness) that I do not understand the basis of the distinction that Breeze makes at 8.4.2. If somebody (Breeze?) could set out the basis of the could/would distinction established in the USA, I should be grateful.
Unless, of course, ii) Breeze at 8.4.2 is merely being facetious and ii) I am not clued up enough to appreciate it.
>>However, that is classical hindsight reasoning
+1
Typical Taranto anti-patent judicial activism.
Agree. (My prior response to WT’s comment got placed elsewhere.)
Noting that the claims are not limited to a particular use is being used by the court to combine references that would not otherwise be combined. IMO.
This post would be a lot more interesting if it focused on why/how the PTAB managed to completely screw things up so badly. The key point of law here (the claims are the invention) is neither complicated nor new. Hint: the attorneys for the patentee should probably be sanctioned.
Also the shenanigans at the PTAB level are totally contradictory to the mythology that the PTAB is some sort of thoughtless patent-destroying machine. Here they went out of their way and ignored the most basic rule for applying 103 in order to avoid invalidation.
The key point of law here (the claims are the invention) is neither complicated nor new. Hint: the attorneys for the patentee should probably be sanctioned.
Maybe. If they were arguing for the narrow construction in front of the PTAB, but arguing for a broader construction in district court, that should be sanctionable. If they were arguing for the same narrow construction in Markman that they proposed here, then there is nothing untoward about that.
Suppose that the defendant’s attorneys had argued in Markman for the same construction that the PTAB used here, would you say that the defendant should face sanctions?
“g”ood (above) and “n”arrow — Greg’s really got to stop drinking that Yglesias Kool aid.
Given the facts recited in the post, there is no way the claims in this patent could be construed as limited to “sacral neuromodulation” without the attorney doubling down on the willful misapplication of the law.
[T]here is no way the claims in this patent could be construed as limited to “sacral neuromodulation”…
Nonsense. “Claims must be read in view of the specification, of which they are a part.” Markman v. Westview Instruments., 52 F.3d 967, 979 (Fed. Cir. 1995). The “field of the invention” in these patents explains that “[t]his invention relates to an implantable medical electrical lead having at least one stimulation electrode adapted to be implanted near the sacral nerves for stimulation of a bundle of sacral nerve fibers…” (emphasis added). We all know what happens when one writes “this invention” or “the present invention” in the spec—that sort of spec text routinely results in the claims being limited much more narrowly than might be natural in view of the plain sense of the claim language.
If a defendant who manufactures a device for trigeminal stimulation were sued on this patent, it would be perfectly justifiable—in view of this spec text—for the defendant to argue at the Markman stage that the claims should read only on devices for implantation near the sacral nerve. If it is not sanctionable, however, for a defendant to urge a particular claim construction, then it should not be sanctionable for the patentee to argue for the exact same construction. If the patentee is content to live with the same narrow construction in an infringement circumstance, there is nothing untoward about the patentee urging that construction in IPR. After all, according to 37 C.F.R. §42.100(b), the claim construction used in IPR is supposed to be the same as the construction used in an infringement action.
+1
This.
Credit where credit is due: Greg is correct here (and in fact may show deftness in the practitioner choosing to apply ‘patent profanity’ in a possibly crowded art.
(His hidden link being of the dilution flavor from his usual Sprint Left imbibing also leans to his favor)
That being said, pretty much anyone disagreeing with Malcolm has the heavy probability of being correct.
You are completely ignoring a LOT of other highly relevant facts (and that’s just the facts that we know about from the summary upthread). If this (partial) quote about the field of the invention was the only fact, you *might* have an argument but even that argument would be flimsy. The patentee clearly knows how to write the word “sacral”. It did so in familial patents. Then it chose not to do it. That seems far, far more important than a single description of “the field of the invention” when there are other statements that plainly indicate the “invention” is not limited to that particular embodiment. Someone is trying to have their cake and eat it too and it’s not the defendant.
Someone is trying to have their cake and eat it too…
Are they, though? Did the patentee argue for a broader construction in some other forum? If so, then I agree that this counts as a sanctionable attempt to have one’s cake and eat it too. On the other hand, if the patentee has argued in all contexts for the same narrow construction, then I do not see the problem.
You are completely ignoring a LOT of other highly relevant facts…
Correct. Just to be clear, the essence of our disagreement is not that you think that the claims can be read broadly and I think that they must be read narrowly. Rather, we both agree that the claims could be read broadly. Our disagreement is that you consider the evidence for the broader construction to be so overwhelming that the patentee’s argument for the narrow construction here must be bad faith, while I see a good faith argument here for the narrow construction.
You are quite right that there are spec passages consistent with a broader construction than the PTAB employed. There are also spec passages that are inconsistent with the broader construction that the CAFC adopted. The evidence is thoroughly ambivalent. Really, both the PTAB’s construction and the CAFC’s construction are reasonable in view of the whole record.
Obviously, where the CAFC prefers a different construction than the PTAB chose, the CAFC wins. Neither construction, however, was so overwhelmingly correct as to make the other construction sanctionable.
Incidentally, I agree with you that this case rather gives the lie to the idea that the PTAB is a “death squad,” biased against the patentee. I think that the PTAB’s claim construction was entirely reasonable here, but the CAFC’s construction was also reasonable. Given that either construction was reasonable, the fact that the PTAB went with the construction favorable to validity cannot easily be squared with the idea of a “kangaroo court” that has a fix in against the patentee.
Hidden links have Loomis loaded language and Drum’s 1984 spins on COVID.
Greg is clearly addicted to the narrative.
As for the patent side, he makes the mistake that he often attributes to others (anecdote as evidence), even as he grabs the low hanging fruit of noting how Malcolm is wrong yet again (here’s a hint Greg: if Malcolm is ranting about how patent holders must be grifters and must face sanctions at every turn, he is most always wrong.
Breaking news, a US court found Ripple XRP to NOT be a security (the SEC said that it was in the lawsuit), potential huge upside for tokens that were not already previously deemed by the gov to be NOT a security (bitcoin was already deemed not to be a security for example, but many others were). XRP pumpin as we speak.
Also the US now engaging in behind the scenes talks to end the definitely not a proxy war.
link to archive.fo
RE: “And, in 2011 the patent laws were finally amended to reflect that paper-focused framework by focusing attention on “the claimed invention” rather than just “the invention.” The amended law now requires an analysis of the “the differences between the claimed invention and the prior art” and whether “the claimed invention as a whole would have been obvious.” This was a subtle change, but one that fundamentally shifted focus from the historic framework of an invention that required reduction to practice toward the paper version that defines the invention in terms of what is claimed.”
One could easily argue that this 2011 amendment merely makes explicit and statutory what was already patent law under the old language. That would be my position.
But, to the extent that it might possibly be otherwise, I note that though US Patent 8,626,314 (issued Jan. 7, 2014) fully comes under provisions of the amended statutory language, the other patent in the litigation, US Patent 8,036,756 (issued Oct. 10, 2011), would not, since the effective date of the change is 18-months after the Sept. 16, 2011 enactment, i.e. not until Mar. 16, 2013.
Pub. L. 112–29, § 3(n), Sept. 16, 2011, 125 Stat. 293, provided that:
‘‘(1) IN GENERAL.—Except as otherwise provided in this section [amending this section and sections 32, 102, 103, 111, 119, 120, 134, 135, 145, 146, 154, 172, 202, 287, 291, 305, 363, 374, and 375 of this title, repealing sections 104 and 157 of this title, and enacting provisions set out as notes under sections 32, 102, and 111 of this title], the amendments made by this section shall take effect upon the expiration of the 18-month period beginning on the date of the enactment of this Act [Sept. 16, 2011], and shall apply to any application for patent, and to any patent issuing thereon, that contains or contained at any time—
‘‘(A) a claim to a claimed invention that has an effective filing date as defined in section 100(i) of title 35, United States Code, that is on or after the effective date described in this paragraph; or
‘‘(B) a specific reference under section 120, 121, or 365(c) of title 35, United States Code, to any patent or application that contains or contained at any time such a claim.’’
Correction: Since the ‘314 patent is a grandchild of the ‘756 (a continuation of a continuation) and makes the specific reference under section 120 to the earlier application, both patents are “pre-AIA”, not just the one.
Agreed
This just a straight-forward application of KSR and Graham v. John Deere, so there is not much to learn from the Federal Circuit. But there are a couple of things to take as precautionary tales:
(1) The narrow “field of the invention” was helpful in establishing a narrow relevant field adopted in the first instance by the Board.
(2) The incantation of “this invention” this and “this invention” were used by the Boardd to invalidate the claims. Still, some dopes were inserting senseless incantations of “this invention” as late as 20o1, and persisting as late as 2011.
Senseless incantations…
One does need to stay current with patent profanity.
Just some silly patent trivia: Not every invention is a combinaton of known materials. U.S. Patent 3156523 (element 95) and U.S. Patent 3161462 (element 96) may be the first patents (only patents) that are not simply a combination of known materials or steps. US Patent 2699054 (tetracycline) is patent on a combination of known elements, and claim 2 (“tetracyline”) was famously well-known before the patent was filed (and might have been in use for over a thousand years). They are all contenders for the shortest claims in issued patents.
DC,
Even for your example, Crouch’s “If you break it down far enough, every invention is simply a combination of known materials or steps.” still applies.
Reminds me of my jab to Malcolm re: my Big Box of protons, neutrons, and electrons.
Hah!
It seems a glaring procedural omission that the invention is not construed as a matter of law- like the words in the claims- not only to firmly locate PHOSITA, but to firmly bound the invention for eligibility purposes.
It is “only an omission” in your untethered fantasy world.”
But you really did know that already, didn’t you?
>No claim of the two patents either mentions or is limited to sacral nerves. The same is true of the titles of the two patents.
IDK. US8626314 are standard system claims that (properly. imho) recite the actual structural elements. It almost sounds like the Federal Circuit would require Medtronic add a use restriction to that system claim, ala “whereby the system is used to stimulate sacral nerves”??
And arguing that the title controls over the spec…yikes.
the title is a part of the spec…yikes
Certainly – but it was not his point that the title was not a part of the specification, but rather that THAT part controls over all other parts.
Obtuse? Is it deliberate?
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