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One issue that seems lost in the quagmire of patent eligibility decisions is a recognition that the U.S. has evolved from the out-dated practice  of central claiming (where inventions were determined from the specification) to the more exacting practice of peripheral claiming (where inventions are defined by the claims).  Indeed, the US Patent Office prohibits one type of central claiming referred to as omnibus claiming under MPEP section 2173.05(r) due to the fact that omnibus claims fail to point out what is included or excluded by the claim language and thus are not sufficiently definite under 35 U.S.C. sec. 112.

Section 2173.05(r) of the MPEP cites the Board decision of Ex Parte Fressola for an historical discussion of the evolution of U.S. claiming practices over the years:

The claims measure the scope of the protected patent right and “must comply accurately and precisely with the statutory requirements.” United Carbon Co. v. Binney & Smith Co., 317 U.S. 228, 232, 55 USPQ 381, 383-84 (1942) (citing General Electric Co. v. Wabash Appliance Corp., 304 U.S. 364, 369, 37 USPQ 466, 468-69 (1938)); 1 A. Deller, Patent Claims, iii-viii (2d ed. 1971) (Deller). 35 U.S.C. § 112 ¶ 2 requires:

The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.

Claims in utility applications [FN1] that define the invention entirely by reference to the specification and/or drawings, so-called “omnibus” or “formal” claims, while perhaps once accepted in American patent practice, are properly rejected under § 112 ¶ 2 as failing to particularly point out and distinctly claim the invention. See MPEP § 706.03(h) (5th ed., rev. 14, Nov. 1992); Landis, Mechanics of Patent Claim Drafting, § 2 (1974).

*2 The written description and the claims are separate statutory requirements. Modern claim practice requires that the claims stand alone to define the invention. Incorporation into the claims by express reference to the specification and/or drawings is not permitted except in very limited circumstances. As stated in McCrady, Patent Office Practice, § 90 (3d ed. 1950):

Sec. 90. Reliance upon Disclosure

The general rule is that the claims should be self-contained; that is, they should not expressly rely upon the description or drawing to give them meaning…. The terms “substantially as described” and the like, once much used in claims (GLASCOCK 1943 § 5640) are now rarely seen. The Office disregards them in interpreting claims….

Claims consisting only in a reference to the disclosure, as “The features of novelty herein disclosed,” are not allowed except in design cases.

….

A claim specifying “the velocity cycle shown in Figure 1” was allowed without discussion of the backfiring expression, and claims have been allowed upon limitations consisting merely in references to a table in the specification and a diagram in the drawing. [Footnotes omitted.]

Incorporation by reference to a specific figure or table of properties, as mentioned in the last paragraph above, is permitted only in exceptional circumstances where there is no practical way to define the invention in words and where it is more concise to incorporate by reference than duplicating a drawing or table into the claim. See Landis, § 51; Ex parte Squires, 133 USPQ 598 (Bd.App.1961) (discussed in Applebaum, The One Line Picture Claim, 44 J.Pat.Off.Soc’y 379 (1962)); In re Faust, 86 USPQ 114 (Comm’r Pat.1943); In re Tanczyn, 202 F.2d 785, 97 USPQ 150 (CCPA 1953) (reference to curve in claim not questioned); Ex parte Lewin, 154 USPQ 487 (Bd.App.1966); Ex parte Gring, 158 USPQ 109 (Bd.App.1967) (reference to photomicrograph). Incorporation by reference is a necessity doctrine, not for applicant’s convenience.

Early claim forms were significantly different in style and content from modern claims. See Pennwalt Corporation v. Durand-Wayland, Inc., 833 F.2d 931, 957-59, 4 USPQ2d 1737, 1758-1760 (Fed.Cir.1987), cert. denied, 485 U.S. 961 (1988) (NEWMAN, J., commentary) (evolution of claim form); Deller, §§ 1-11. The original method of claiming in this country was based on the central definition where the claims named the broad features of the invention (often just an enumeration of the elements and the reference characters of the drawings) together with a phrase such as “substantially as set forth.” These claims were construed to “incorporate by reference the description in the specification and equivalents thereof.” Pennwalt, 833 F.2d at 959, 4 USPQ2d at 1759. During this early period, “[t]he drawings and description were the main thing, the claims merely an adjunct thereto.” Deller, § 4.

*3 Beginning with the Patent Act of 1870, the claims took on more importance. As described in Deller, § 7:

They became much more self-sufficient in that they gave the cooperative relationship of the elements enumerated, instead of a mere catalog of elements followed by some such phrase as “constructed and adapted to operate substantially as set forth.”

The method of claiming shifted from the central definition to the peripheral definition. As described in Deller, § 5:

Central definition involves the drafting of a narrow claim setting forth a typical embodiment coupled with broad interpretation by the courts to include all equivalent constructions. Peripheral definition involves marking out the periphery or boundary of the area covered by the claim and holding as infringements only such constructions as lie within that area.

The conversion from the central definition to the peripheral definition was due to the more rigorous requirements for the claim to stand alone to define the invention and the refusal of the courts to expand the scope of the claims beyond their literal terms. Modern claim interpretation is based on the peripheral system where the scope of the claim is not expanded. See Wilson Sporting Goods Co. v. David Geoffrey & Assoc., 904 F.2d 677, 684, 14 USPQ2d 1942, 1948 (Fed.Cir.), cert. denied, 111 S.Ct. 537 (1990) (doctrine of equivalents does not expand claims, it only expands right to exclude to “equivalents”). Modern claim interpretation requires that the claims particularly point out and distinctly claim the invention without reading in limitations from the specification. Pennwalt, 833 F.2d at 959, 4 USPQ2d at 1759-60.

Another interesting discussion of this evolution toward peripheral claiming is Judge Newman’s commentary  in Pennwalt Corp. v. Durand-Wayland:

1. The Patent Act of 1793 did not provide for patent examination or patent “claims”.

Judicial determinations of equivalency were made before as well as after the development of systems of patent examination and patent claims. The decisions must be understood in the context of the practices of the time.

The patent grant before 1793 was not automatic, but was subject to review by a committee consisting of the Secretary of State, the Secretary of War, and the Attorney General. Act of April 10, 1790, ch. 7, § 1, 1 Stat. 109, 109-10 (1790). History records that the increasing burdens of this review led to change in 1793, whereby the patent was routinely granted, subject only to formalities and the payment of a fee.

The Patent Act of 1793, ch. 11, § 3, 1 Stat. 318, 321-22 (1793), required the applicant to

deliver a written description of his invention, and of the manner of using, or process of compounding the same, in such full, clear, and exact terms, as to distinguish the same from all other things before known….In infringement actions the accused device was compared with the description in the patent document. Defenses such as lack of novelty, or prior use, were considered by the courts. A finding of infringement did not require precise correspondence between the description and the accused device. The trial courts determined, 958*958 often by jury, whether there was “substantial similarity” between the accused device and that described in the patent. For example, in Odiorne v. Winkley, 18 F. Cas. 581, 582 (C.C.D.Mass.1814) (No. 10,432), the court, Story, J., charged the jury:

The first question for consideration is, whether the machines used by the defendant are substantially, in their principles and mode of operation, like the plaintiff’s machines. If so, it was an infringement of the plaintiff’s patent to use them…. Mere colorable alterations of a machine are not sufficient to protect the defendant.See also Lowell v. Lewis, 15 F. Cas. 1018, 1021 (C.C.D.Mass.1817) (No. 8,568)(“whether the defendant has violated the patent-right of the plaintiff … depends upon the fact, whether the pumps of Mr. Perkins and of Mr. Baker are substantially the same invention”).

Our research showed no issue of equivalency, i.e. “substantial” similarity, in the cases that reached the Supreme Court during this early period, although several other significant aspects of patent law were treated by the Court. See, e.g., Evans v. Eaton,16 U.S. (3 Wheat.) 454, 4 L.Ed. 433 (1818), the first patent infringement decision of the Supreme Court.

2. The Patent Act of 1836 provided for patent examination and for a statement of the inventor’s “claim”.

The Patent Act of 1836, ch. 357, 5 Stat. 117 (1836), was enacted at a time of burgeoning industrial activity and creativity, growth in patent filings and, inexorably, increasing infringement litigation. Section 6, 5 Stat. 119, provided that an applicant for patent

shall particularly specify and point out the part, improvement, or combination, which he claims as his own invention or discovery.It is not clear from the legislative history whether the purpose of the requirement for particularity was to facilitate examination or enforcement, but the style and content of the ensuing “claims” were significantly different from those of later practice. The applicant simply named the broad features that embodied the invention, accompanied by such words as “substantially as set forth”. The claims

served merely to call attention to what the inventor considered the salient features of his invention. The drawings and description were the main thing, the claims a mere adjunct thereto.R. Ellis, Patent Claims, § 3 (1949) [hereinafter “Ellis“]. Ellis cites a typical claim, published by the Patent Office in 1869:

[1.] The combination of the cutters EE, and the feeding rollers II and JJ, substantially as and for the purpose hereinbefore set forth.Id., § 6. This is the style of claim that was before the Court in most of the early decisions that are cited in asserted support of the majority position. The Court explained in The Corn Planter Patent, 90 U.S. (23 Wall.) 181, 218, 23 L.Ed. 1 (1874), that a clause such as “substantially as set forth”

throws us back to the specification for a qualification of the claim, and the several elements of which the combination is composed.To this extent early claim form was a precursor of the “means-plus-function” form of today, in that they both incorporate by reference the description in the specification and equivalents thereof.

Infringement continued to be determined by comparison of the accused device with the description in the specification. See, 959*959 e.g., Burr v. Duryee, 68 U.S. (1 Wall.) 531, 573, 17 L.Ed. 650 (1864):

[An infringement] is a copy of the thing described in the specification of the patentee, either without variation, or with such variations as are consistent with its being in substance the same thing.As will be discussed, the doctrine of equivalents flowered during this period, although patent claims played a quite limited role in patent enforcement, serving more to identify the essential features of an invention than to set limits to the scope thereof.

3. The Patent Act of 1870 started the move to increased specificity in claiming.

Section 26 of the Patent Act of 1870, ch. 230, 16 Stat. 198, 201 (1870), for the first time required that the applicant

particularly point out and distinctly claim the part, improvement, or combination which he claims as his invention or discovery. [emphasis added]Judicial decisions during this period show that the transition toward greater specificity was gradual indeed, but by the early 1900s claims “became much more self-sufficient in that they gave the cooperative relationship of the elements enumerated, instead of a mere catalog of elements”. Ellis, § 6.

There evolved during this period a complex jurisprudence on equivalents, wherein the doctrine was applied to the circumstances of each case, as justice required. As in earlier periods, a patent’s claims were less significant in infringement litigation than was the description of the invention, and it was from the specification and drawings that the invention’s substance was determined. However, patent claims became of increased importance as they began to reflect adjustments made during the examination process and, at first occasionally and then more frequently, claims were referred to by the courts in determinations both of literal infringement and of infringement by application of the doctrine of equivalents.

4. Claim form continued to evolve after the Patent Act of 1952.

According to the modern style, patent claims no longer merely claim the salient features, the “heart” of the invention. Our predecessor court stated in In re Lundberg, 244 F.2d 543, 548, 44 C.C.P.A. 909, 916, 113 USPQ 530, 534 (1957):

[N]otwithstanding the [last] paragraph of section 112, it is the language itself of the claims which must particularly point out and distinctly claim the subject matter which the applicant regards as his invention, without limitations imported from the specification, whether such language is couched in terms of means plus function or consists of a detailed recitation of the inventive matter. [emphasis added]This practice is in sharp contrast with that of the 19th and early 20th centuries. There was a gradual, erratic, but inexorable transition to the requirement that the claims contain sufficient detail so that they can stand alone, without reliance on the specification to show distinctions from the prior art. Ellis, § 4, describes this as claiming the perimeter of an invention, rather than its core. Deller calls it “stak[ing] out the metes and bounds of the boundaries”, attributing enhanced rigor in claim drafting to the Supreme Court’s decision in Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545, 148 USPQ 459 (1966). 1 A. Deller, Patent Claims, v-vi (2d ed. 1971). Typical of this form is the Pennwalt claim shown ante, with its multiple clauses delineating the entire sorter and its operation. Despite the changes in form and content of patent claims over this long period, the principles of the doctrine of equivalents remained constant.

See also “The Evolution of English Patent Claims as Property Definers” by David J. Brennan for a discussion of the evolution of claiming in England [Link].

The thought for the day comes from the US Supreme Court decision in Aro Mfg. Co., Inc. v. Convertible Top Co., 365 U.S. 336 (1961).  In that case, the Court explained what an “invention” is in the context of 35 U.S.C. Sec. 271. Namely, it is the totality of the elements of the claim.  You might ask yourself if the Federal Circuit is creating a double-standard with respect to the meaning of “invention” under  35 U.S.C. sec. 271 and under 35 U.S.C. sec. 101.  Moreover, is the court backsliding to a “gist of the invention” analysis for section 101 purposes?

Under 35 U.S.C. sec. 271 as explained by Aro I a patentee must show that an infringer meets all the elements of a claim.  However, under some recent decisions with respect to 35 U.S.C. sec. 101, some might argue that a judge is free to take a more leisurely approach by discounting various claim elements and attempting instead to divine the underlying idea from the patent specification.

Aro I stated:

For if anything is settled in the patent law, it is that the combination patent covers only the totality of the elements in the claim, and that no element, separately viewed, is within the grant. See the Mercoid cases, supra, 320 U.S. at 320 U. S. 667; 320 U.S. at 320 U. S. 684. [Footnote 10] The basic fallacy in respondent’s position is that it requires the ascribing to one element of the patented combination the status of patented invention in itself. Yet this Court has made it clear in the two Mercoid cases that there is no legally recognizable or protected “essential” element, “gist” or “heart” of the invention in a combination patent. In Mercoid Corp. v. Mid-Continent Co., supra, the Court said:

“That result may not be obviated in the present case by calling the combustion stoker switch the ‘heart of the invention’ or the ‘advance in the art.’ The patent is for a combination only. Since none of the separate elements of the combination is claimed as the invention, none of them, when dealt with separately, is protected by the patent monopoly.”
320 U.S. at 320 U. S. 667. And in Mercoid Corp. v. Minneapolis-Honeywell Regulator Co., supra, the Court said:

“The fact that an unpatented part of a combination patent may distinguish the invention does not draw to it the privileges of a patent. That may be done only in the manner provided by law. However worthy it may be, however essential to the patent, an unpatented part of a combination patent is no more entitled to monopolistic protection than any other unpatented device.”

Aro Mfg. Co., Inc. v. Convertible Top Co., 365 U.S. 336, 344-45 (1961).

The Federal Circuit heard oral argument this morning in The Association for Molecular Pathology v. USPTO (sometimes referred to as the “Myriad” case, which is also a party in the case).  You can listen to the oral argument here: [Listen].

The USPTO’s satellite office in Detroit opened last week.  I hadn’t seen any definitive information as to what art units were going to be represented in the Detroit office.  So, I did an area code search in the USPTO employee directory.  If those results are any indication, there are currently examiners for the following Group Art Units:

There are also seven employees in the office of the Board of Patent Appeals and Interferences.

Judges Rader, Newman, and Reyna were placed in the rather unenviable position of having to review one of their colleague’s cases in P.S. Chez Sidney v. U.S.I.T.C, App. No. 2008-1526 (Fed. Cir. July 13, 2012).

In today’s decision, Judge Reyna writing for the court reverses-in-part and vacates-in-part a decision by Judge Evan Wallach from when Judge Wallach served on the Court of International Trade.  I believe this is the first opportunity that the Federal Circuit has had to review one of Judge Wallach’s decisions since he was appointed to the Federal Circuit.  You can read the opinion here.

The Federal Circuit web site reports that Senior Judge Arthur Gajarsa has retired from the Federal Circuit.  The announcement reads:

Circuit Judge Arthur J. Gajarsa retired from the U. S. Court of Appeals for the Federal Circuit on June 30, 2012, concluding a distinguished judicial career during which he served the judiciary and his nation with distinction.

In his parting message to the court, Judge Gajarsa said:

“It has been indeed an honor and privilege to have worked with all of you during the past 15 years. You made my work at the court easy to perform and a pleasure to undertake. My success and the success of the court are attributable not only to my judicial colleagues, but also to the fine members of the court team. I shall miss all of you and I look forward to observing the continued fine work of the court in the future.
I am looking forward to retirement as of June 30, not as the end of my career, but the beginning of a new one.”

The University of New Hampshire School of Law notes that Judge Gajarsa will serve as the first Distinguished Jurist-in-Residence at the Franklin Pierce Center for Intellectual Property:

Judge Arthur Gajarsa, recently retired from the US Court of Appeals for the Federal Circuit, will be joining us as the first Distinguished Jurist-in-Residence at the Franklin Pierce Center for Intellectual Property. He will begin teaching this fall and will be working with us to enhance our practice-ready curriculum, as well as providing strategic guidance as we build the Franklin Pierce Center for Intellectual Property into a global hub for innovation.

Link

The ABA sent a letter to Senate leaders the other day urging a vote on several consensus nominees, including Richard Taranto for the Federal Circuit.  You can read the letter here.  The Blog of Legal Times reports that Mr. Taranto’s nomination is at risk of falling victim to election year politics. [Link].

Mr. Sri Srinivasan was nominated to the D.C. Circuit the other day.   He and current Federal Circuit nominee Richard Taranto were advocates on opposite sides of the case Hynix Semiconductor, Inc., et al. v. Rambus Inc., 645 F.3d 1336 (Fed. Cir. 2011).   You can listen to that oral argument here: [Listen].

According to the site JudicialNominations.org, Mr. Taranto’s nomination is currently the fourth oldest nomination awaiting consent from the full Senate.

I couldn’t help but be reminded of the CyberSource v. Retail Decisions, 654 F. 3d 1366 (Fed. Cir. 2011) case today when I read the court’s opinion in Toshiba Corp. v. Imation Corp., 2011-1204 (Fed. Cir. June 11, 2012).  In Toshiba, Judge Moore writing for the court states:

“[A]pparatus claims cover what a device is, not what a device does.“

Paragon Solutions, LLC v. Timex Corp., 566 F.3d 1075, 1090 (Fed. Cir. 2009) (quoting Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990)).

One would assume that principle applies to article of manufacture claims (like the Beauregard claim at issue in CyberSource) as well.

In another recent case, Smartmetric Inc. v. American Express Co., 2011-1473, (Fed. Cir. April 11, 2012) Judge Moore noted that the Federal Circuit does not rewrite claims, but instead gives effect to the terms chosen by the patentee:

Construing “insertion . . . into” to also mean “passed near” would deviate from the term’s plain and ordinary meaning, conflict with the specification, and erroneously rewrite the claims. See K-2 Corp. v. Salomon S.A., 191 F.3d 1356, 1364 (Fed. Cir. 1999) (“Courts do not rewrite claims; instead, we give effect to the terms chosen by the patentee.”).

In Chef America v. Lamb-Weston, 358 F.3d 1371 (Fed. Cir. 2004), Judge Friedman writing for the court stated that a court may not redraft a claim even to sustain its validity:

This court, however, repeatedly and consistently has recognized that courts may not redraft claims, whether to make them operable or to sustain their validity. See, e.g., Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1349 (Fed. Cir. 2002); Elekta Instrument S.A. v. O.U.R. Scientific Int’l, Inc., 214 F.3d 1302, 1308-09 (Fed. Cir. 2000); Process Control Corp. v. Hydreclaim Corp., 190 F.3d 1350, 1357 (Fed. Cir. 1999); Rhine v. Casio, Inc., 183 F.3d 1342, 1345 (Fed. Cir. 1999); Quantum Corp. v. Rodime, PLC, 65 F.3d 1577, 1584 (Fed. Cir. 1995); Becton Dickinson & Co. v. C.R. Bard, Inc., 922 F.2d 792, 799 n.6 (Fed. Cir. 1990). Even “a nonsensical result does not require the court to redraft the claims of the [’290] patent. Rather, where as here, claims are susceptible to only one reasonable interpretation and that interpretation results in a nonsensical construction of the claim as a whole, the claim must be invalidated.” Process Control Corp., 190 F.3d at 1357. “Where, as here, the claim is susceptible to only one reasonable construction, the canons of claim construction cited by [Chef America] are inapposite, and we must construe the claims based on the patentee’s version of the claim as he himself drafted it.” Id.

And, of course there is the Supreme Court case White v. Dunbar, 119 U.S. 47, 51-52, 7 S.Ct. 72, 74-75, 30 L.Ed. 303 (1886),, where Justice Bradley wrote:

Some persons seem to suppose that a claim in a patent is like a nose of wax, which may be turned and twisted in any direction, by merely referring to the specification, so as to make it include something more than, or something different from, what its words express…. The claim is a statutory requirement, prescribed for the very purpose of making the patentee define precisely what his invention is; and it is unjust to the public, as well as an evasion of the law, to construe it in a manner different from the plain import of its terms. This has been so often expressed in the opinions of this court that it is unnecessary to pursue the subject further.

With those citations in mind, it is disheartening that the court stated the following in CyberSource:

CyberSource argues that claim 2 is patent-eligible per se because it recites a “manufacture,” rather than a “process,” under the statutory language of § 101. CyberSource contends that, by definition, a tangible, man-made article of manufacture such as a “computer readable medium containing program instructions” cannot possibly fall within any of the three patent-eligibility exceptions the Supreme Court has recognized for “laws of nature, physical phenomena, [or] abstract ideas.” Appellant’s Br. 47-48 (quoting Bilski, 130 S.Ct. at 3225). We disagree.

Regardless of what statutory category (“process, machine, manufacture, or composition of matter,” 35 U.S.C. § 101) a claim’s language is crafted to literally invoke, we look to the underlying invention for patent-eligibility purposes. Here, it is clear that the invention underlying both claims 2 and 3 is a method for detecting credit card fraud, not a manufacture for storing computer-readable information. This case is thus similar to In re Abele, 684 F.2d 902 (CCPA 1982). In Abele, claim 5 of the patent at issue recited “[a] method of displaying data” comprising the steps of “calculating the difference” between two numbers and “displaying the value.” Id. at 908. The court concluded that claim 5 was not directed to patent-eligible subject matter because it claimed an abstract idea. Id. However, claim 7 was argued to be different because it recited an “[a]pparatus for displaying data” comprising “means for calculating the differences” between two numbers and “means for displaying the value.” Id. at 909 (emphases added). Though claim 7 literally invoked an “[a]pparatus,” the court treated it as a method claim for the purpose of its § 101 analysis. Due to its “broad” and “functionally-defined” nature, the court found that treating claim 7 as an apparatus claim would “exalt form over substance since the claim is really to the method or series of functions itself.” Id. (citation omitted). Accordingly, the court placed “the burden… on the applicant to demonstrate that the claims [were] truly drawn to [a] specific apparatus distinct from other apparatus[es] capable of performing the identical functions.” Id. (citation omitted).

In the present case, CyberSource has not met its burden to demonstrate that 1375*1375 claim 2 is “truly drawn to a specific” computer readable medium, rather than to the underlying method of credit card fraud detection. To be sure, after Abele, we have held that, as a general matter, programming a general purpose computer to perform an algorithm “creates a new machine, because a general purpose computer in effect becomes a special purpose computer once it is programmed to perform particular functions pursuant to instructions from program software.” In re Alappat, 33 F.3d 1526, 1545 (Fed.Cir. 1994). But we have never suggested that simply reciting the use of a computer to execute an algorithm that can be performed entirely in the human mind falls within the Alappat rule. Thus, despite its Beauregard claim format, under Abele, we treat claim 2 as a process claim for patent-eligibility purposes.

Speculation is beginning to grow across the country as to where the next satellite patent offices will be located.  Here is a report from a local television station in my town of Denver that asserts that a local satellite office would add $400 million to the local economy.  [Link]

In this previous post, I tried to figure out how long en banc opinions usually take to issue after oral argument.  Looking back on the chart, it is interesting to note that most of the decisions were issued in the second half of the month.  Of the thirteen en banc cases that I looked at, only one was decided before the 14th of the month.

Now we know.  After years of wondering what the phrase “common sense” encompasses, we finally have a definition from the Federal Circuit.  “Common sense” means knowledge so basic that it certainly lies within the skill set of an ordinary artisan.  The Federal Circuit stated as much in its recent decision in Mintz v. Dietz & Watson, App. No. 2010-1341 (Fed. Cir. May 30, 2012):

The district court made a clear error, however, in its unsubstantiated reliance on “a common sense view” or “common sense approach” to hold that it would have been “obvious to try” a locking engagement. The mere recitation of the words “common sense” without any support adds nothing to the obviousness equation. Within the statutory test to determine if a claimed invention has advanced its technical art field enough to warrant an exclusive right, “common sense” is a shorthand label for knowledge so basic that it certainly lies within the skill set of an ordinary artisan. With little more than an invocation of the words “common sense” (without any record support showing that this knowledge would reside in the ordinarily skilled artisan), the district court over-reached in its determination of obviousness.

At this juncture, the district court’s reliance on the perspective of an artisan in the knitting arts is especially problematic. 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. Moreover, the district court emphasized that the problem in the prior art was merely forming a checker-board or grid-like pattern. To be specific, the district court erroneously phrased the issue as whether it would have been obvious to simply “fix each point of intersection” of each strand in order to solve that problem.

Mintz v. Dietz & Watson, App. No. 2010-1341 (Fed. Cir. May 30, 2012).

Interestingly, the Federal Circuit asserts this definition of “common sense” without citing any authority for the definition.  Indeed, in prior opinions of the CAFC or CCPA, the terms “common sense” and “common knowledge” (or “basic knowledge”) have been recited separately — thus, implying that they were not the same thing.  For example, the KSR guidelines refer to: In re Bozek, 416 F.2d 1385, 1390 (CCPA 1969) (explaining that a patent examiner may rely on ‘‘common knowledge and common sense of the person of ordinary skill in the art without any specific hint or suggestion in a particular reference’’) and In re Zurko, 258 F.3d 1379, 1383, 1385 (Fed. Cir. 2001) (clarifying that a factual foundation is needed in order for an examiner to invoke ‘‘good common sense’’ in a case in which ‘‘basic knowledge and common sense was not based on any evidence in the record’’).   Don’t get me wrong, though.  I like the court’s definition of “common sense.”

From a patent examination/prosecution standpoint, I find the association of “common sense” with an ordinary artisan (as opposed to the generality of mankind, regardless of their area of expertise) to be interesting.  Presumably, the PTO should require an examiner who is relying on “common sense” in a rejection to: (1) recite who one of ordinary skill in the art is; and, either (2a) affirm that the examiner possesses basic knowledge in that art; or (2b) provide factual evidence showing what is basic knowledge in that art.  As is the case already under the KSR Guidelines, a bald assertion of “common sense” by itself would be insufficient.

If you were wondering how long it has been since the Supreme Court referred to “common sense” in its KSR v. Teleflex decision, it has only been five years (April 2007).

If you were wondering if the issue of “common sense” was addressed during the Federal Circuit oral argument — it was not.

You can read the Mintz opinion here: [Link].

Listening to oral argument recordings from various cases presents an opportunity to try and read the tea leaves as to where the Federal Circuit is heading with respect to a particular area of the law.  The oral argument in Walker Digital v. Microsoft, 2011-1419 (Fed. Cir. 2012) presents one such opportunity. 

In the oral argument of Walker Digital v. Microsoft, which was argued on March 9, 2012, Judge Moore made a comment about the patentee having a problem if the claims were construed in such a way that they required joint infringement.  The Akamai v. Limelight and McKesson v. Epic cases were argued en banc four months earlier — so, presumably, Judge Moore knew as of March 9, 2012 which way the CAFC was headed in deciding those cases when she made her comment.  You can listen to the sound bite yourself and see if you think it indicates how the CAFC will decide those en banc divided infringement cases: [Listen].

As a sidenote, Judge Moore also took a friendly shot at patent prosecutors and their alleged deficiencies when it comes to knowing the rules of grammar:  [Listen].  Ouch.  Of course, a patent prosecutor is entitled to be his or her own grammarian.  See Chicago Steel Foundry Co. v. Burnside Steel Foundry Co., 132 F.2d 812, 814-15 (7th Cir. 1943), cited in Jonsson v. Stanley Works, 903 F.2d 812, 820-21 (Fed. Cir. 1990).