Developments in § 102/103 Law - PowerPoint Presentation

Slide1

Developments in § 102/103 Law

Betty Chen – Fish &

Richardson

Adam Alper – Kirkland & EllisSlide2

KSR

Int'l Co. v. Teleflex Inc. (2007)

Pushed Back Against TSM

Emphasized Predictability Of Outcome

KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398,127 S. Ct. 1727,167 L. Ed. 2d 705 (2007)

Acknowledged “TSM” Requirement

Id.

Id.

There is no necessary inconsistency between the idea underlying the TSM test and the Graham analysis.

But when a court transforms the general principle into a rigid rule

that limits the obviousness inquiry, as the Court of Appeals did here,

it errs.

When there is design need or market pressure to solve a problem and there are

a finite number

of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the

anticipated success,

it is likely the product

not of innovation but of ordinary kill and common sense.

In that instance the fact that a combination was obvious to try might show that it was obvious under

§ 103.

When it first established the requirement of demonstrating a teaching, suggestion, or

motivation to combine

known

elements in order to show that the combination

is

obvious, the Court of Customs and Patent Appeals captured a

helpful insight

.Slide3

Current Statement of

KSR Principle

Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd.

,821 F.3d 1359, 1367 (Fed. Cir. 2016)

“[O]ne must have a motivation to combine accompanied by a reasonable expectation of achieving what is claimed in the patent-at-issue.”Slide4

KSR

: Ten Years In Review

Source:

Ron Osborne, Matthew Cutler and Gregory Upchurch, 10 Years of KSR: 4 Key Statistical Takeaways, Law 360 (May 4, 2017), https://www.law360.com/articles/916864/10-years-of-ksr-4-key-statistical-takeawaysSlide5

KSR

: Ten Years In Review

Source:

Ron Osborne, Matthew Cutler and Gregory Upchurch, 10 Years of KSR: 4 Key Statistical Takeaways, Law 360 (May 4, 2017), https://www.law360.com/articles/916864/10-years-of-ksr-4-key-statistical-takeawaysSlide6

KSR

: Ten Years In Review

Source:

Ron Osborne, Matthew Cutler and Gregory Upchurch, 10 Years of KSR: 4 Key Statistical Takeaways, Law 360 (May 4, 2017), https://www.law360.com/articles/916864/10-years-of-ksr-4-key-statistical-takeawaysSlide7

KSR: Impact On Motivation To Combine Requirement

1

2

3

45

6

7

8

9

10

Year Since KSR0

10203040506070

Percentage

Opinions Citing KSR, Referencing Motivation,

and Referencing Predictability

Percentage of Cases Citing KSR

Percentage of Cases

Referencing Motivation

Percentage of Cases Referencing

Predictability

Source:

Ron Osborne, Matthew Cutler and Gregory

Upchurch,

10 Years of KSR: 4 Key Statistical Takeaways

, Law 360

(May 4, 2017), https://www.law360.com/articles/916864/10-years-of-ksr-4-key-statistical-takeawaysSlide8

Motivation to Combine Still Relevant

3form, Inc. v. Lumicor, Inc., 678 F. App'x 1002, 1011 (Fed. Cir. 2017) (citing Durling v. Spectrum Furniture Co.

, 101 F.3d 100, 103 (Fed. Cir. 1996))

“

The obviousness inquiry for design patents is not so limited, as it asks whether a designer ‘would have combined teachings of the prior art to create the same overall visual appearance as the claimed design,’ not merely the figures or illustrations.”

“Because

the weight of the evidence supports the court's finding that there was

no motivation to combine these references

, we affirm the court's conclusion that

Everlight failed to prove that the '250 patent would have been obvious

.”

Holding that the patent was obvious, because

“[i]n light of this evidence, we conclude that substantial evidence supports the Board's conclusion that

a POSITA would have been motivated to combine

Vittone's control strategy with Kawakatsu.”

Nichia Corp. v. Everlight Americas, Inc.

, 855 F.3d 1328, 1337 (Fed. Cir. 2017)

Paice LLC v. Ford Motor Co.

, 681 F. App'x 885, 894 (Fed. Cir. 2017) Slide9

Ways To Create Fact Issues On Obviousness

Primary reference missing elementsSecondary reference(s) missing elementsLack of motivation to combineSecondary considerations show non-obviousness

Impact of KSR?Slide10

Secondary Considerations Of Non-Obviousness

Commercial successLong- felt but unsolved needsCopyingPraiseUnexpected resultsIndustry acceptanceFailure of others

Skepticism by expertsSlide11

Intercontinental

Great Brands LLC v. Kellogg N. Am. Co

.:

Patent in SuitIntercontinental Great Brands LLC v. Kellogg N. Am. Co., 869 F.3d 1336 (Fed. Cir. 2017) Re-sealable Food Package With FramesSlide12

Intercontinental Great Brands LLC v. Kellogg N. Am. Co.:

Prior Art Combination

Rigid Re-sealable Container Without Frames

Cookie Packaging Frames

Intercontinental Great Brands LLC v. Kellogg N. Am. Co., 869 F.3d 1336 (Fed. Cir. 2017) Slide13

Intercontinental Great Brands LLC v. Kellogg N. Am. Co

.:Weighing of Evidence Authorized

Weighing Objective Indicia Against Motivation-to-Combine Evidence Is Legal Conclusion

Intercontinental Great Brands LLC v. Kellogg N. Am. Co., 869 F.3d 1336 (Fed. Cir. 2017)

“This

way of structuring the analysis

implements the

requirement that the approach to

determining obviousness

be “expansive” and “flexible.” See KSR,

550 U.S. at 415, 127 S.Ct. 1727. It reflects an understanding of the role of “motivation” that fits our consistent treatment of that element of the analysis as factual in nature. And it fits the Supreme Court's treatment of objective indicia as evidence to be weighed in the overall legal determination

of obviousness. We see no error in the sequence of steps the district court took in arriving at its ultimate obviousness determination.”Slide14

Intercontinental Great Brands:

Factual Or Legal Determinations? Court reliance on “common sense” acceptable to overcome patent holder argumentsLack of expert testimony on alleged infringer’s side not an obstacle to obviousness finding

Presence of expert testimony on patent holder’s side not an obstacle to obviousness findingExpert testimony on prior art alternatives used to show “known problem” motivating combinationDefendants’ early rejection of patented idea insufficient to create fact issueSlide15

Cases Finding Fact Issues On Motivation To Combine

Patent At Issue:

Combination Of Linear Downscan Transducer And A Circular Downscan Transducer

“Garmin's

expert is expected to testify that a person having ordinary skill would have been motivated to combine Tucker and Betts. 

See generally

 Huff Rep. ¶¶ 367–89. Navico's expert concludes otherwise. 

See, e.g.

, Vincent Rebuttal Rep. ¶ 348. And based on a review of these

competing reports, the Court concludes there are fact issues, at least as to motivation-to-combine, that preclude summary judgment on this issue.”Navico Inc. v. Garmin Int'l, Inc.

Navico Inc. v. Garmin Int'l, Inc., No. 216CV00190JRGRSP, 2017 WL 3911776, at *2 (E.D. Tex. Aug. 23, 2017), report and recommendation adopted, No. 216CV00190JRGRSP, 2017 WL 3908105 (E.D. Tex. Sept. 6, 2017)Slide16

Cases Finding Fact Issues On Motivation To Combine

Patent At Issue:

Improvements In Disposable Glucose Test Strip Technology. 

LifeScan Scotland, Ltd. v. Shasta Techs., LLC

LifeScan Scotland, Ltd. v. Shasta Techs., LLC, No. 11-CV-04494-WHO, 2016 WL 7732710, at *6 (N.D. Cal. Mar. 8, 2016)

Dr. Smith asserts that

“the conductive polymer is essential to the function of Musho. To use the reaction zone of Musho without the conductive polymer (and associated dopant compound) would be changing the fundamental principle of operation of the Musho device.

A person of skill in the art ... would not have been motivated to combine

 them.” Smith Decl. ¶ 90.

Defendants have not convincingly explained otherwise

.Slide17

Case Affirming Jury Verdict of

NonobviousnessPatent At I

ssue: Steering system for watercraft. 

Arctic Cat v. Bombardier1998 Sea-Doo GTX RFI

1997 Sea-Doo ChallengerPatented inventionSlide18

Case Affirming Jury Verdict of

NonobviousnessPatent At Issue

: Steering system for watercraft. 

Arctic Cat v. Bombardier

No dispute that the Challenger and GTX disclose all elements of most asserted claims. Only issue was motivation to combine.

The combination was one of a finite number of predictable solutions to the problem of off-throttle steering.

Court affirmed jury’s verdict because:There were problems associated even with the “obvious” combinations Witnesses expressed “surprise” by the effectiveness of prototypesThe Arctic Cat watercraft received industry praise, including statements by the chief of the U.S. Coast Guard Office of Boating SafetySlide19

Case

Remanding PTAB’s Obviousness DeterminationPatent At I

ssue: Locating and controlling access to data by giving file a substantially unique name based on data content. 

Apple petitioned for IPR based on combination of two references: Woodhill (system for backing up or restoring data) and Stefik (system for managing rights to access data)Fed Cir: Board’s opinion is deficient in finding motivation to combine because it merely states that a POSITA would have understood that two references could be combined. “It does not imply a motivation to pick out those two references and combine them to arrive at the claimed invention.”Board needs to show how the combination was supposed to work and that a POSITA

would have combined them.Personal Web Technologies LLC v. AppleSlide20

Secret Prior Art

Patent At Issue

: Abbreviated new drug application litigation with four patents, three filed before AIA and one after AIA. 

Teva claimed invention was on sale more than one year before priority dates based on a license agreement and a purchase agreement. A press release and SEC report disclosed agreement, price terms, and dosage amount.Fed Cir punted and declined to address the effect of the phrase “or otherwise available to the public” on public uses.Open questions: Does “or otherwise available to the public” apply to secret sales? When would the court conclude that a subject matter not otherwise available to the public?

Helsinn Healthcare SA v. Teva Pharmaceuticals Slide21

Secret Prior Art

Patent At Issue

: Abbreviated new drug application litigation with four patents, three filed before AIA and one after AIA. 

Petition for en banc review asks: Does mere public disclosure of the existence of a sale trigger the on sale bar under 35 U.S.C. 102(a)(1) of the America Invents Act, even though the invention was not made “available to the public” before the critical date?Helsinn Healthcare SA v. Teva Pharmaceuticals