Well, November 28th was certainly an interesting day at the Supreme Court (to those in the Patent Bar, at least). Although it is generally a futile effort to predict how the Supreme Court will rule on any given issue, my reading of the KSR v. Teleflex arguments leaves me pessimistic that the “TSM test” will escape this challenge unscathed.
Below are some quotes that I found of particular interest:
Transcript at page 6.
JUSTICE ALITO: But what is the difference between asking whether something is implicit in the, in the prior art and simply asking whether it would have been obvious to a person of ordinary skill in the art?
Transcript at page 9.
JUSTICE BREYER: But I don’t understand, though I’ve read [In re Winslow] about 15 or 20 times now, it though I’ve read it about 15 or 20 times now, I just don’t understand what is meant by the term “motivation.”
Transcript at page 15.
JUSTICE KENNEDY: No. No. No. It took from 10 years to go from — I think 10 years from Asano to Engelgau, so it must have been not all that obvious.
Transcript at page 19.
JUSTICE KENNEDY: Do you agree that in that context it would serve a valid purpose, i.e., can we -that is to say, can we keep the motivation test and then supplement it with other, with other means of, other ways of showing obviousness?
MR. HUNGAR (ON BEHALF OF THE UNITED STATES, AS AMICUS CURIAE): Yes, Your Honor. We agree that teaching suggestion and motivation are valid means of proving obviousness, valid considerations for the Court. And this Court’s precedents are entirely consistent with that. A number of cases cited by respondent show that the Court has looked to suggestion as a means to determining whether a patent is obvious.
The problem with the Federal Circuit’s test is it makes that the exclusive test and precludes obviousness determinations in the absence of satisfaction of that test which this Court’s precedents are clearly not consistent with.
Transcript at page 22.
JUSTICE GINSBURG: And what I understand [the U.S. amicus curiae] brief to say is that [the TSM test] has to be supplemented with what you have called, you’ve labelled “sufficiently innovative.” And then I begin to think well, what’s “sufficiently innovative?” How is a trier supposed to know if something — in other words I think what you’re suggesting as a supplement is rather vague.
MR. HUNGAR: Your Honor, I think the “sufficiently innovative” is more of a description rather than a test; it’s a description of what this Court said in Graham.
Transcript at page 28.
MR. GOLDSTEIN (FOR RESPONDENT): Thank you, Mr. Chief Justice, and may it please the Court: I think the Court will want to have available to it the red brief and also this big, which is the supplemental joint appendix which has some of the patents in it, and I’m going to quote from both of them. I think you can’t understand what motivation means and what the whole test that the Federal Circuit is employing means –
JUSTICE SCALIA: You’re right about that.
Transcript at page 36.
JUSTICE KENNEDY: It looks like Dystar was decided by the Federal Circuit after it decided this case, didn’t it?
MR. GOLDSTEIN: Yes, it did.
JUSTICE KENNEDY: I mean, you have to be defending what the Federal Circuit did in this case. And the fact that they say well now, what this means is really in some other case, that seems to me that’s really irrelevant.
MR. GOLDSTEIN: If I could just clarify, Dystar –
JUSTICE KENNEDY: And I think you should tell us when the case has been decided after, I think it has much less, much less weight.
Transcript at page 37.
JUSTICE SCALIA: You say [the CAFC’s] test is inclusive. I would say its test is meaningless. [The CAFC] essentially said, our test simply reduces to what, what your opponents in this litigation say.
Transcript at page 40.
CHIEF JUSTICE ROBERTS: [The term ‘obvious’] adds a layer of Federal Circuit jargon that lawyers can then bandy back and forth, but if it’s — particularly if it’s nonexclusive, you can say you can meet our teaching, suggestion, or motivation test or you can show that it’s nonobvious, it seems to me that it’s worse than meaningless because it complicates the inquiry rather than focusing on the statute.
Transcript at page 41.
JUSTICE SCALIA: It is — I agree with the Chief Justice. It is misleading to say that the whole world is embraced within these three nouns, teaching, suggestion, or motivation, and then you define teaching, suggestion, or motivation to mean anything that renders it nonobvious. This is gobbledygook. It really is, it’s irrational.
Transcript at page 46.
JUSTICE BREYER: Supposing we then were to say exactly what this Court already said, that the standard here is obvious, we list a few of these additional factors that they’ve thrown in, and just as the Court said before, all these additional factors are there. They can be considered in an appropriate case, but it is important to remember that the ultimate matter which is for the judge is to apply the word “obvious” or not in light of the evidence and what the experts say and the facts as found by a jury or whoever is the factfinder. Would you have any objection to an opinion like that.
MR. GOLDSTEIN: No.
U.S. Pat. No. 4,455,816: Pedal operated mower.
What is claimed as new is as follows:
1. A pedal operated mower assembly comprising a tricycle frame having a front wheel mounted in a fork, a central frame mounting a pedal sprocket and a wide fork frame at the rear supporting a reel-type mower assembly, the mower assembly having spaced support plates mounted on the wide fork frame, the support plates supporting a shaft having a rear sprocket about a midpoint of the shaft for chain engagement with the pedal sprocket, separate arrays of cutter blades spaced about the shaft on opposite sides of the rear sprocket respectively, said arrays of blades being mounted upon the shaft for rotation therewith and defining a gap therebetween in which is located the rear sprocket, a drive chain connecting the pedal sprocket and the rear sprocket, the drive chain being received in said gap, and a cutter member cooperating with the cutter blades for providing mowing of the grass.
2. The invention according to claim 1 wherein the support plates further support a roller shaft on which is mounted a roller positioned rearwardly of the cutter member.
3. The invention according to claim 1 wherein a protective shield is mounted on rod means above the cutter blades on the wide fork frame, the protective shield having a radius of curvature with its radius centered proximate the radius of the shaft mounting the cutter blades.
4. The invention according to claim 1 wherein the tricycle frame includes a wide seat being mounted on the tricycle frame, and handle bars are mounted by a goose neck means extending upwardly from the front wheel fork.
5. The invention according to claim 1 wherein the support plates for the mower assembly are pivotally mounted upon the tricycle frame and the support plates are rigidly spaced apart by a shaft for the roller, by the shaft for the rear sprocket and for mounting the cutter blade, and by a spacer rod.
As promised, the link to the transcript for the November 28th oral arguments before the SCOTUS in KSR International Co. v. Teleflex, Inc. can be found here.
Any thoughts? Discussion to follow!
Notably, starting this Term, the Supreme Court is making the transcripts of oral arguments available free to the public on its Website on the same day the argument is heard by the Court. I’ll attempt to post links to the transcripts for the KSR v. Teleflex arguments when they become available.
Clearly, a PHOSITA Would Not Simply Fire a Death Ray at a Patient.
Among other issues not discussed herein, the CAFC affirmed the district court’s (C.D. Cal.) holdings of invalidity as obvious with respect to U.S. Pat. Nos. 4,870,287 (the ’287 patent) and 5,260,581 (the ’581 patent). The patent relates to a proton beam system for use in cancer treatment.
In particular, Optivus argued that modifying the prior art (a neutron therapy facility at the University of Washington) to produce protons instead of neutrons would result in a “death ray” and thus teaches away from the invention designed to treat patients. “A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” However, the CAFC found this unpersuasive. “Clearly, one of ordinary skill in the art would not simply [modify the prior art device] and direct the high intensity proton beam at a patient without further calculation or adjustment.” Or, more simply, a PHOSITA would know to dial-down the intensity of the beam so as to not fry a patient with a “death ray.”
In affirming the finding of obviousness, the CAFC also rejected Optivus’s arguments that there was no motivation to combine the art. In considering motivation in an obviousness analysis, courts ask “whether a person of ordinary skill in the art, possessed with the understandings and knowledge reflected in the prior art, and motivated by the general problem facing the inventor, would have been led to make the combination recited in the claims.” Here, there was no question that the CDR establishes that a person having a working familiarity with particle beam technology as it relates to cancer treatment, motivated by the need for more effective and efficient proton therapy facilities, would have been led to combine the University of Washington’s neutron therapy facility with the proton beam therapy design outlined in the CDR (prior art reference).
Accordingly, the patent claims are invalid as obvious – Affirmed.
Derivatives of EDTA, As Read in Light of the Specification, Included Salts But Not Structural Analogs.
On appeal to the CAFC, the court reversed a finding of literal infringement of Abraxis’s U.S. Pat. Nos. 5,714,520 (the ’520 patent) and 5,731,355 (the ’355 patent) upon finding that the district court (S.D. N.Y.) erred in the construction of the claim term “edetate.” However, the CAFC affirmed the district court’s finding of infringement under the doctrine of equivalents (DOE).
The technology at issue relates to a pharmaceutical composition (DIPRIVAN® – an injectible oil-in-water emulsion containing propofol, or 2,6-diisopropylphenol,used to induce and maintain general anesthesia and sedation in patients) having a edetate preservative for retarding microbial growth in a giving set.
In attempting to formulate a generic composition having a different preservative, Mayne identified the calcium trisodium salt of diethylenetriaminepentaacetic acid (pentetate), or calcium trisodium DTPA. Notably, Mayne’s researchers had stated that this preservative is structurally similar (a structural analog) to edetate, and was chosen to match the reference product characteristics and stability profile.
The district court construed “edetate” to mean “EDTA as well as compounds structurally related to EDTA regardless of how they are synthesized” based upon the specification definition of edetate as “EDTA and derivatives thereof.” The CAFC disagreed, and found this construction to be overly broad, based particularly on the interpretation of the term “derivatives.” The inventors listed several derivatives of EDTA suitable for the invention. All of these derivatives are salts of EDTA, and not structural analogs. When read in light of the entire specification, the court found that the listing of various EDTA salts limited the term “derivatives” to exclude structural analogs. Interestingly, the court pointed to a statement that edetate was “the only agent that would meet our requirements.” (Emphasis in opinion). Thus, the CAFC concluded that edetate is EDTA and derivatives of EDTA, such as salts, but not including structural analogs. Accordingly, there can be no literal infringement with use of DTPA as a preservative in the generic DIPRIVAN® formulation.
In affirming the DOE holding, however, the CAFC noted the traditional DOE standards. For example, “infringement may be found under the doctrine of equivalents if every limitation of the asserted claim, or its ‘equivalent,’ is found in the accused subject matter, where an ‘equivalent’ differs from the claimed limitation only insubstantially.” Also, under the function-way-result test for DOE, an accused device that “performs substantially the same function in substantially the same way to obtain the same result” as the patented invention may infringe under the doctrine. Furthermore, what constitutes equivalency must be determined against the context of the patent, the prior art, and the particular circumstances of the case. Equivalence, in the patent law, is not the prisoner of a formula and is not an absolute to be considered in a vacuum.
The district court had concluded that calcium trisodium DTPA and edetate were equivalent after finding that the differences existing between the two were insubstantial. The district court identified the “function” of edetate as retarding microbial growth in propofol oil-in-water emulsions; the district court then defined the “way” that edetate worked as by metal ion chelation; and finally the district court found that the result achieved was retarding microbial growth to the extent required by the microbiological test set forth in the claims. The CAFC found this to be “well-reasoned” and not clearly erroneous (the standard for the DOE factual determination).
Notably, the CAFC rejected all of Maynes arguments regarding application of the DOE in this case. In particular, Abraxis was not barred from capturing DTPA, or any other polyaminiocarboxylate for that matter, as an equivalent just because they limited the claims to edetate. Abraxis did not disavow other polyaminiocarboxylates! A clear an unmistakeable surrender of subject matter is required to find such an estoppel.
JW Note: Have a safe and happy Thanksgiving holiday!
U.S. Pat. No. 6,877,267: Turkey decoy tiltable counter-balanced support base.
1. A turkey decoy with a tiltable counter-balanced support base, comprising: a circular base having a generally curved bottom surface with a small flat central portion, a top surface connecting to said curved bottom surface, said top surface including a central cone having a hole therein, said central cone extending above said circular base, a rod including a proximate end extending vertically through said central hole cooperatively engaging means for holding disposed within said circular base and a distal end extending from said circular base, and means for weighing disposed therein positioned at selected locations around said rod for counter-balancing said circular base; a mountable molded turkey body comprising a synthetic material and having an opening in a bottom surface; said rod extending upward through said opening in said bottom surface of said mountable molded turkey body and said distal end of said rod cooperatively engaging means for pivotally supporting said mountable molded turkey body allowing said mountable molded turkey body to rotate 360 degrees.
2. The turkey decoy with a tiltable counter-balanced support base of claim 1, wherein said means for holding is a threaded socket for threadably engaging a threaded distal end of said rod.
3. The turkey decoy with a tiltabie counter-balanced support base of claim 1, said top surface including a circular depression forming a trough extending around said central cone defining an upper section resembling a torus.
4. The turkey decoy with a tiltable counter-balanced support base of claim 1, wherein said small flat central portion is about two inches in diameter.
5. The turkey decoy with a tiltable counter-balanced support base of claim 1, wherein said means for holding said rod within said central cone is a friction fit.
6. The turkey decoy with a tiltable counter-balanced support base of claim 1, wherein said rod is retractable and comprises at least two telescoping sections.
7. The turkey decoy with a tiltable counter-balanced support base of claim 1, said top surface including a circular depression forming a trough extending around said central cone defining an upper section resembling a torus.
U.S. Pat. No. 4,858,627: Smoker’s hat.
What is claimed is:
1. A portable hat system for enabling the smoking of tobacco-type products without affecting the environment comprising:
hat means for covering the head of a smoker;
means for intaking ambient air into the hat means, the intake ambient air flowing in front of the smoker’s face when the hat is worn by the smoker;
separate filter means for removing combustion products released by the smoker into the intake ambient air to produce filtered air; and
means for exhausting the filtered air from the hat means.
2. The portable hat system according to claim 1, further comprising a visor dependingly attached to said hat means and covering the face of the smoker when the hat means is worn by the smoker.
3. The portable hat system according to claim 2 further comprising staging means for supporting a lit cigarette under the hat means in a position enabling the intake ambient air to flow therepast.
4. The portable hat system according to claim 3 further comprising receptacle means disposed under said hat means for receiving solid combustion products, said receptacle means being disposed in a position enabling the intake ambient air to flow therepast.
5. The portable hat system according to claim 4 wherein said hat means comprises hard hat means for preventing injury to the smoker’s head from falling objects when the hat means is worn by the smoker.