Posts Tagged “invalidity”

Have you ever noticed that the cooked meats at the deli – the whole turkey breast, the roast beef, the ham – are often cooked in a mesh sleeve that makes the surface of the meat have a windowpane check pattern? The same pattern you’d have if you were pressed against an oversized window screen. If you were in the meat packing business, would you consider a way to lock the intersecting threads of the mesh obvious?

If you’ve filed a patent application anytime in the recent past you’ve probably been smacked by an “obviousness” rejection of some or all of your claims. Obviousness used to be much less of a problem – so much less that it seemed that every trivial “invention” was getting a patent.

But, like any pendulum, this situation did a 100% about face after the Supreme Court’s KSR ruling. Within that ruling the patent examiners, and the district courts, apparently, found the “common sense” rule. That is, even if they could not find a direct link between some prior art and the current application, they could now appeal to common sense to justify an obviousness rejection or invalidity ruling. How do you fight common sense?

The problem is that common sense makes a lot more sense in hindsight. Every trail looks obvious once someone has marked it for you. Luckily for Marcus and Neil Mintz, inventors of a new “meat encasement” stockinette, the Court of Appeals (CAFC) reversed the District Court’s invalid-as-obvious decision by pointing to that Court’s hindsight errors.

A patent claim is invalid as obvious “if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art.” This definition requires an understanding of the level of ordinary skill in the art and a review of any objective evidence of nonobviousness. To determine the level of skill in the art the court will look at: the type of problems encountered in the art; prior art solutions to those problems; rapidity of  innovation in the art; sophistication of the technology; and educational level of active workers in the field.”

In this case, the prior art, the problems giving rise to the invention, and the invention itself featured the “meat encasement” art. The district court, however, said the person of ordinary skill would have familiarity with the knitting art but no familiarity with the meat encasing art! Entirely omitting the meat encasement art, according to the CAFC, led the validity search astray.

Additionally, the CAFC said the district court made a clear error in its unsubstantiated reliance on “a common sense view” to hold that it would have been “obvious to try” a locking engagement (to make the stockinette). “Common sense”, the CAFC said, is a shorthand label for knowledge so basic that it certainly lies within the skill set of an ordinary artisan. But of course the basic knowledge (common sense) of a knitting artisan is likely to be different from the basic knowledge in the possession of a meat encasement artisan.

The district court also used the invention to define the problem that the invention solves; that is, hindsight. Often the inventive contribution lies in defining the problem in a new revelatory way. In this case, the question was NOT about how to lock the grid of the stockinette in place but rather whether a person of ordinary skill in the meat encasement arts, at the time of the invention, would have recognized the adherence problem recognized by the inventors and found it obvious to produce the meat encasement structure that included the locking stitch in the open mesh stockinette.

Technical advance, often occurs through incremental steps. These marginal advances in retrospect may seem deceptively simple, particularly when retracing the path already blazed by the inventor. Where the invention is less technologically complex, it is particularly important to ward against falling into the forbidden use of hindsight. Simply because the technology can be easily understood does not mean it is obvious at the time of invention. In fact, objective consideration of simple technology is often the most difficult because, once the problem and solution appear together in the patent disclosure, the advance seems self-evident.

Many of my clients who are engineers fall into this trap and resist filing for a patent – they forget that having already solved a problem is always going to make it look obvious in hindsight. The important question to ask, however, is will this “obvious” solution provide your company with a sustainable competitive advantage in your markets?

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The story of Prometheus proves that bringing good things to mankind may not always have a good payback. In case you forgot, the Greek Titan Prometheus stole fire from Zeus and gave it to us mere mortals. Zeus punished him for his crime by having him bound to a rock while a great eagle ate his liver every day only to have it grow back to be eaten again the next day. While Prometheus the Titan’s crime might have been clear, not so with Prometheus Laboratories, whose patent on certain diagnostic blood tests might or might not have been patentable.

Prometheus Labs has had its patent eaten and regrown at least twice. However, with a Supreme Court ruling it seems the cycle is finally over (at least for Prometheus). For the rest of us, the Supreme Court’s invalidity ruling for Prometheus raises significant questions about the value of investing in certain types of research activities.

To put the case in a nutshell, Prometheus discovered/observed/researched that the lowest effective dose of a particular class of drug could be determined by the level of its metabolite (the product that remains after the drug is broken down by the body) measured in the blood. Their patent claim(s) essentially said “administer the drug to a patient and determine from a blood test if the metabolite is within the desired range”. From the perspective of the Supreme Court, these claims were nothing more than a statement of a law of nature (that the body produces the metabolite in proportion to how effectively it uses the administered drug) along with the instruction to observe nature in action. And, since laws of nature are not patentable, Prometheus lost the right to keep others from selling competing test kits. Note that the test kits were not patented, just the use of the kits to guide doctors in determining the proper dosage.

This ruling is important to the rest of us because the basis for invalidity was that the invention was ruled “not patentable subject matter”. To the Supreme Court the patent was the equivalent of saying “put more wood on the fire if you’re cold, break the fire apart if you are too hot.” Basic law of nature; more fuel equals hotter fire, less fuel equals cooler fire.

But this perspective is flawed, since it presumes that coming up with the acceptable range of the measurement has no inventive, patentable value. But saying that the acceptable range has no patentable value is really an issue of obviousness – just like knowing when to throw wood on Prometheus’s gift to man is obvious. The Supreme Court said “we don’t care how hard it is to come up with the right limits to make this a medically valid test. The Constitutional directive to reward inventors and discoverers of advances to the useful arts will not be applied to tests like this“.

We all may suffer from this ruling. How many research dollars will flow into medical tests that are simple to perform but whose diagnostic value comes from knowing how to interpret the results?

The validity of Prometheus’s patent should have been determined by obviousness, not by subject matter. If measuring the single metabolite in a hundred patients was all that was needed, then maybe it’s obvious. If figuring out which metabolite to measure, out of a hundred in the blood stream, was required, well, maybe not so obvious.

How about your company – how much of your value comes from a key bit of hard won knowledge? Are you the next company to have your liver eaten?


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Ahh, that feels good! Sitting in one of those massage chairs from Sharper Image or Brookstone can be quite comfortable. Wouldn’t it be nice if your car’s driver’s seat could give you a massage during that long commute. That’s what Schukra U.S.A., Inc. thought when they hired Nartron Corporation to design a control system that would use the existing actuators in motorized car seats to provide a massage function. What they got instead was a pain in the neck.

Actually, first they got the controller design they wanted, although Nartron obtained and retained a patent on the system. Then Schuka got another supplier, Borg Indak, to deliver the system. THEN they got the pain in the neck; Nartron sued Indak for contributory infringement. You might think that Schuka might have had the foresight to obtain the right to sublicense the patent for the purposes of procuring the parts, but that’s a different story.

As is almost par for the course, Indak fought back by claiming Nartron’s patent was invalid. The interesting twist was Indak’s motion for summary judgement; in it, Indak stated that one of Schuka’s employees (Benson) was an unnamed inventor, and the District Court agreed, essentially shutting down the infringement suit.

On appeal, the CAFC said “not so fast”. Just because Benson suggested using a “lumbar extension” to perform the in-seat massage didn’t mean he had contributed in a substantive, inventive way to the invention, which, after all, was the controller that drove the existing seat mechanisms. The court’s words are important for us to remember;

“One who simply provides the inventor with well-known principles or explains the state of the art without ever having a firm and definite idea of the claimed combination as a whole does not qualify as a joint inventor.”

Moreover, a joint inventor must “contribute in some significant manner to the conception or reduction to practice of the invention [and] make a contribution to the claimed invention that is not insignificant in quality, when that contribution is measured against the dimension of the full invention.”

In this case it was clear to the court that the invention was the controller, which could operate on any car seat that had the motion mechanisms in place and that Benson had only pointed out to the real inventors that the lumbar extender was one of the available, prior art, mechanisms. Further, the CAFC said “Benson is not entitled to co-inventorship by simply posing the result to Nartron and leaving it to Nartron to figure out how to accomplish it.

So, when naming the inventors on a patent application, make sure that the individuals have made a substantive contribution to the actual invention and not just pointed out how the invention might be used with existing products. Otherwise you might rub the CAFC the wrong way.


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