Archive for August, 2013

Old Prior Art and Obviousness

Wednesday, August 28th, 2013

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.

Abstract Idea

Sunday, August 25th, 2013

The oral argument of Digitech Information Systems v. BWM Auto Leasing will interest some readers.  The patentee appealed a summary judgment of invalidity under 35 U.S.C. §101.  Much of the oral argument focused on what was the definition of an abstract idea.

I thought this oral argument was notable for several reasons.  For one, Chief Judge Rader seemed to be less focused on trying to determine patent eligibility based on the “subject matter” of the specification rather than the claims.  Chief Judge Rader focused most of his questioning on trying to elicit a definition of “abstract idea”  from appellee’s counsel.  That led to this humorous moment when the fire alarm went off during the oral argument: [Listen].  Judge Dee Benson, sitting by designation, joked that the alarm was an abstract idea, while Chief Judge Rader jokingly cast suspicion on appellee’s counsel for triggering the alarm in an attempt to avoid providing a definition of an “abstract idea.”

Judge Moore again championed software patents during the oral argument.  She inquired if claims can be distilled down to a series of steps by discounting structure and other meaningful limitations, then doesn’t every software patent distill down to an algorithm.  Chief Judge Rader followed that comment with observations about the software economy that we live in: [Listen].  Their points are well-taken.  One only hopes the Supreme Court will some day recognize that we no longer live in an age dominated by combines, reapers, and other mechanical inventions.  We live in the information age and need to provide innovators the ability to protect their inventions.

Given the makeup of the panel and the tenor of the oral argument, I was a little bit surprised that the panel not only affirmed the district court but also issued a Rule 36 Judgment.  You can listen to the entire oral argument here:  [Listen].

Requesting that a Board opinion be made precedential

Wednesday, August 21st, 2013

Practitioners might not be aware that they have the opportunity to request that Board opinions be made “precedential.”

The Board’s Standard Operating Procedures explain the process:

III. Criteria For Identifying Candidates To Be Made Precedential

A. The Board’s policy shall be to limit opinions which are candidates for being made Precedential to those meeting one or more of the following criteria:

1. The case is a test case whose decision may help expedite resolution of other pending appeals or applications.

2. An issue is treated whose resolution may help expedite Board consideration of other cases or provide needed guidance to examiners or applicants pending court resolution.

3. A new rule of law is established.

4. An existing rule of law is criticized, clarified, altered or modified.

5. An existing rule of law is applied to facts significantly different from those to which that rule has previously been applied.

6. An actual or apparent conflict in or with past holdings of this Board is created, resolved, or continued.

7. A legal issue of substantial public interest, which the Board has not treated recently, is resolved.

8. A significantly new factual situation, likely to be of interest to a wide spectrum of persons other than the party (or parties) to a case is set forth.

9. A new interpretation of a Supreme Court decision, a decision of the Court of Appeals for the Federal Circuit, or of a statute, is set forth.

B. The purpose of a Precedential opinion is to create a consistent line of authority as to a holding that is to be followed in future Board decisions.

C. Disposition by nonprecedential – Informative or Routine – opinion does not mean that the case is considered unimportant, but only that a Precedential opinion would not add significantly to the body of law.

D. The Director, the Patents Operation acting through a Commissioner or Assistant Commissioner, the appellant, a third party member of the public, or any judge may request in writing that an opinion be made Precedential, by forwarding that request, along with accompanying reasons, to the Chief Judge. Typically, this request should be received within 60 days after the opinion is issued. The request and subsequent response shall be filed separately from the official record.

IV. Procedures For Adoption Of Binding Precedent

A. Any opinion of the Board satisfying one or more of the criteria identified in Section III above may be adopted as Precedential, either at the time of its entry or subsequent to entry, provided that the following steps are followed.

1. A majority of the merits panel that is entering or has entered the opinion agrees that the opinion should be Precedential.

2. If the Chief Judge considers the opinion an appropriate candidate for being made Precedential, the Chief Judge will circulate the opinion under consideration for designation as Precedential to all of the judges.

3. Within a time set in the notice circulating the opinion (typically two weeks from the date of the notice), each judge shall vote “agree” or “disagree” (without further written comment or written discussion) on whether that judge agrees the opinion should be made Precedential. Barring extended unavailability (as in the case of serious illness), each judge has an obligation to vote “agree” or “disagree.” If a judge does not communicate a vote within the time set, then the judge’s vote will be normally considered to be in agreement that the opinion be made Precedential.

4. If the Chief Judge considers that a sufficient majority of those voting agree that the opinion should be made Precedential, the opinion (along with the numerical results of the vote) will be forwarded to the Director, or the General Counsel acting by delegation on the Director’s behalf, for review. If the Chief Judge does not consider that a sufficient majority of those voting agree that the opinion should be made Precedential, the opinion will not be forwarded for review.

5. If the Director, or the General Counsel acting by delegation on the Director’s behalf, agrees that the opinion should be made Precedential, the Director or General Counsel will notify the Chief Judge of that determination.

6. The opinion is then published or otherwise disseminated following notice and opportunity for written objection afforded by 37 CFR § 1.14, in those instances in which the opinion would not otherwise be open to public inspection.

B. Opinions entered by expanded panels do not automatically become Precedential, but instead are subject to the procedures of this SOP. However, a prior Precedential opinion of a prior panel of the Board may only be overturned by an opinion of an expanded panel that itself has been made Precedential or pursuant to an event set forth in Section VI.D. The authoring judge for any decision by an expanded panel shall call the Chief Judge’s attention to the opinion prior to entry of the opinion so that consideration of whether the opinion shall be made Precedential can occur in advance of entry.

C. The Chief Judge will determine if the opinion is an appropriate candidate to be made Precedential. If the Chief Judge is convinced that the opinion ought not to be made Precedential (e.g., because the Chief Judge believes the opinion does not meet the criteria of Section III above), the Chief Judge is under no obligation to consult other judges.

D. Where a written request for a Precedential opinion has been received, the Chief Judge shall prepare an order indicating that the opinion has, or has not, been adopted as precedent of the Board under the procedures of this Standard Operating Procedure.

E. The opinion will become Precedential upon being published or otherwise disseminated. Precedential opinions will be posted at:

F. Clearance for publication, if needed under the rules, will be obtained by the Chief Judge.

(Emphasis added).

Don’t miss out

Tuesday, August 20th, 2013

Just a quick reminder to let you know that the AIPLA Electronics and Computer Law Patent Summit is almost sold-out.  Get your registration in now, if you’re planning to attend.  Register

The Honorable Raymond T. Chen Sworn-In

Monday, August 5th, 2013


The Honorable Raymond T. Chen was sworn-in today as the Federal Circuit’s most recent judge.

Chief Judge Rader administered the oath of office while Judge Chen’s wife held the Lincoln Bible.

It will be interesting to see if a future judge at some point elects to use the Thomas Jefferson Bible [Link] for the swearing-in ceremony.

Name the Denver Patent Office

Sunday, August 4th, 2013

One of our local senators in Colorado is soliciting names that he can recommend as the name for the new Denver Patent Office.  Some of the names being suggested are Nikola Tesla, David Packard, and Justice Byron White — all with ties to Colorado.  In a rather curious phenomenon, some are suggesting a local VC who vocally opposes software patents.  You might want to add your two cents: [Link].