Old Prior Art and Obviousness

The Patently-O blog covered the Leo Pharmaceutical Products, Ltd. v. Rea, 2013 WL 4054937 (Fed. Cir. 2013) case today.  One of the observations in that post was Chief Judge Rader’s comment that:

The elapsed time between the prior art and the ′013 patent’s filing date evinces that the ′013 patent’s claimed invention was not obvious to try. Indeed this considerable time lapse suggests instead that the Board only traverses the obstacles to this inventive enterprise with a resort to hindsight. It took over a decade—after Dikstein’s disclosure of the benefits of combining vitamin D and corticosteroid treatments into one formulation—for Dikstein’s formulations to be tested for storage stability. And, until the advancement made by the inventors of the ′013 patent, no one had proposed a new formulation that would be storage stable. The problem was not known, the possible approaches to solving the problem were not known or finite, and the solution was not predictable. Therefore, the claimed invention would not have been obvious to try to one of ordinary skill in the art. Indeed ordinary artisans would not have thought to try at all because they would not have recognized the problem.

This is not the first time that Chief Judge Rader has noted that old prior art might be less persuasive in an obviousness analysis.  In the oral argument of Cimline, Inc. v. Crafco, Inc., Chief Judge Rader made the following comments about old prior art when a defendant asserted a common sense theory in combination with old prior art:  [Listen].  See my earlier coverage of the Cimline case here.

I’m curious if the court will ever draw on cases like  Ecolochem, Inc. v. Southern California Edison Co., 227 F.3d 1361 (Fed. Cir. 2000), cert. denied, 532 U.S. 974 (2001) and George M. Martin Co. v. Alliance Machine Systems, 618 F. 3d 1294 (Fed. Cir. 2010)  to argue that old prior art is less probative of obviousness.  In Ecolochem, the court reasoned that near simultaneous invention was indicative of obviousness.  In George M. Martin, the court cited the Supreme Court in Concrete Appliances Co. v. Gomery, 269 U.S. 177, 184 (1925) for the proposition that:

“Independently made, simultaneous inventions, made ‘within a comparatively short space of time,’ are persuasive evidence that the claimed apparatus ‘was the product only of ordinary mechanical or engineering skill.’ ”

George M. Martin v. Alliance Machine Systems, at 1305.

Therefore, it stands to reason that if shortness in time between inventive activity is relevant to show obviousness, then a substantial length of time between inventive activity — particularly when common sense is alleged — is relevant to argue against obviousness.

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