If anyone needed further proof that patents are more easily held obvious after KSR, look no further.  The Federal Circuit held that a patent directed to a method of email marketing with improved efficiency was obvious based on the "common sense" of one in the art. 

The claimed method had four steps, the fourth of which was (as described by the court) repeating the first three steps until a minimum threshold of emails were successfully received.  It was undisputed that the first three steps were known in the art and that the final step was not in the prior art. The district court held the addition of the final step "would be obvious to virtually anyone."

The Federal Circuit agreed.  After citing the relevant passages from KSR regarding common sense, the court observed:

[W]hile an analysis of obviousness always depends on evidence that supports the required Graham factual findings, it also may include recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference or expert opinion.

The court did reiterate that the analysis underlying the application of common sense "must be made explicit" in order to facilitate review, but held the district court had done so here.  The court observed that if the relevant technology were complex, expert opinions may be required.  However, in this case the level of ordinary skill in the art was a high school education and limited experience.  Of course, the court also held that even if the expert witness testimony was considered, it also confirmed the conclusion of obviousness.  Accordingly, the Federal Circuit affirmed the district court's grant of summary judgment.

More detail of Perfect Web Techs., Inc. v. InfoUSA, Inc. after the jump.

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In a recent decision, the Federal Circuit affirmed-in-part a district court's decision regarding obviousness, holding the defendant was not entitled to summary judgment that the asserted claims were invalid for obviousness.  The court vacated the district court's entry of judgment of an inconsistent jury verdict of obviousness:  the jury held a dependent claim obvious but the independent claim from which it depends not obvious.  The court stated that such a result reflects an "irreconcilable inconsistency" and thus a new trial on obviousness must be granted.

The court also addressed the question of incorporation by reference.  The defendant argued the claims were anticipated based on a prior art patent that made reference to another patent for one of the relevant limitations.  The district court held the incorporation by reference was ineffective and excluded expert testimony regarding the "combined" prior art.  The Federal Circuit reversed, holding the incorporation by reference was sufficiently specific to be successful, and remanded the issue of anticipation to the district court for redetermination.

More on Callaway Golf Co. v. Acushnet Co. after the jump.

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The Federal Circuit Wednesday affirmed a district court's denial of preliminary injunction to the plaintiffs (a patentee and its licensee with a right to enforce the patent) in a design patent case. The district court held there was a substantial question regarding the validity of the patent that was not shown to lack substantial merit, and therefore the plaintiffs were not likely to succeed on the merits.

On appeal, the Federal Circuit took the opportunity to clarity how district courts should assess likelihood of success in patent cases, particularly when invalidity is raised in response to the motion for preliminary injunction. Specifically, the court observed:

[W]hen analyzing the likelihood of success factor, the trial court, after considering all the evidence available at this early stage of the litigation, must determine whether it is more likely than not that the challenger will be able to prove at trial, by clear and convincing evidence, that the patent is invalid. We reiterate that the "clear and convincing" standard regarding the challenger's evidence applies only at trial on the merits, not at the preliminary injunction stage. The fact that, at trial on the merits, the proof of invalidity will require clear and convincing evidence is a consideration for the judge to take into account in assessing the challenger's case at the preliminary injunction stage; it is not an evidentiary burden to be met preliminarily by the challenger.

If the trial court is persuaded, then it follows that the patentee by definition has not been able to show a likelihood of success at trial on the merits of the validity issue, at least not at this stage. This decision process, which requires the court to assess the potential of a "clear and convincing" showing in the future, but in terms of what is "more likely than not" presently, rests initially in the capable hands and sound judgment of the trial court.

Applying this standard, the Federal Circuit determined the district court did not abuse its discretion in denying the injunction.

More detail of Titan Tire Corp. v. Case New Holland, Inc. after the jump.

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In a decision Wednesday, the Federal Circuit affirmed a district court's determination that the asserted claims in a pharmaceutical patent were not proven obvious.  As is common in pharmaceutical cases, the defendant filed an ANDA asserting the patent covering the compound and its use was invalid, and in the ensuing infringement suit admitted its proposed generic drug met the claim limitations.  The district court specifically held the prior art did not suggest the closes prior art compound as a potential "lead compound," as the various members of the class of compounds had unpredictable properties rendering the claimed compound's beneficial properties unexpected, and secondary considerations of commercial success and long-felt need confirmed the defendant's failure to prove the claims obvious.  The district court also rejected a separate argument of obviousness-type double patenting based on an expired patent also owned by the patentee.

The Federal Circuit affirmed.  Under Takeda, the court observed obviousness for structurally similar chemical compounds depends on one of ordinary skill in the art selecting the asserted prior art compound as the "lead compound," or the starting point for further experimentation.   Here, the court did not reach the question, as it determined that even if the closest prior art compound was selected, the defendant has not shown obviousness.  There was simply no reason shown why one of ordinary skill in the art would modify even the closest compound to produce the claimed compound (a positional isomer) given the inherent unpredictability of the physical-chemical, biological, and therapeutic characteristics of the individual compounds in the class.  The court also cited its recent Kubin decision, observing there was "no credible evidence that the structural modification was routine."  Further, there was evidence of both commercial success ($2.7 billion in sales) and long-felt need.  As a result, the court affirmed the district court's determination that the claims had not been proven obvious.

Similarly, the court affirmed the finding of no obviousness-type double patenting.  Here, the prior art patent claimed intermittent dosing of compounds in the same class as the claimed compound (to compensate for side effects), whereas the asserted claims are directed to the compound itself (both isolated and in a pharmaceutical composition) and using the compound to treat osteoporosis.  There was no clear and convincing evidence of overlap between the patents, so there was no double patenting.

More detail of Procter & Gamble Co. v. Teva Pharms. USA, Inc. after the jump.

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In a recent decision, the Federal Circuit held it was not an abuse of discretion for a district court to retain an independent expert pursuant to Rule 706 to assist the jury in understanding the technology relating to a complicated electrical patent.  The district court was frustrated with the technology, and observed "the notion that a jury is going to understand [the technical details], to me, is foolishness."  The district court judge was concerned the jury would make a decision for reasons other than the scientific merits, and invoked Rule 706 to have a neutral expert testify at trial.  The judge also informed the jury that the expert had been retained by neither party, but further stated they should give him no additional weight because of this.  The jury held two claims infringed under the doctrine of equivalents, but all asserted claims invalid as obvious.

The Federal Circuit affirmed.  The court held the appointment of an independent expert and the disclosure of his independence was not an abuse of discretion.  This was based in part on the fact that the jury's findings did not exactly track the independent expert's testimony:  the jury held more claims infringed and more claims obvious compared to the expert's testimony.  While the court did state the disclosure of the expert's neutrality to the jury "trouble[d] this court to some extent," in the Ninth Circuit district courts have "wide latitude" to make such appointments.

On the merits, the court held substantial evidence supported the jury's implicit factual finding underlying its obviousness determination, namely all elements of the asserted claims were present in the prior art, based on the testimony of the defendant's expert and the neutral expert.

More detail of Monolithic Power Sys., Inc. v. O2 Micro Int'l Ltd. after the jump.

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Today the Federal Circuit decided the appeal in In re Kubin, a case dealing with how the Supreme Court's KSR decision will apply in the field of biotechnology.  The decision is available here.  We previously blogged about the BPAI decision here and the Federal Circuit's oral arguments here.  Those posts have detailed descriptions of the facts in the case.

The Federal Circuit affirmed the Board's finding that the claims were obvious.  As to the applicability of KSR, and specifically the "obvious to try" rational that KSR permits in some cases, the court noted the Supreme Court did not limit KSR to only "predictable arts."  Thus, a claim in biotechnology can sometimes be obvious if it would be "obvious to try," noting that language to the contrary in the Deuel case is no longer good law.

Instead, the Federal Circuit quoted its 1988 decision in In re O'Farrell, stating:

It is true that this court and its predecessors have repeatedly emphasized that "obvious to try" is not the standard under § 103. However, the meaning of this maxim is sometimes lost. Any invention that would in fact have been obvious under § 103 would also have been, in a sense, obvious to try. The question is: when is an invention that was obvious to try nevertheless nonobvious?

On this point, the court observed there are at least two such situations.  The first is the inverse of the situation contemplated in KSR where a finite number of identified, predictable solutions exist.  Such a case exists when "what would have been 'obvious to try' would have been to vary all parameters or try each of numerous possible choices until one possibly arrived at a successful result, where the prior art gave either no indication of which parameters were critical or no direction as to which of many possible choices is likely to be successful."  Another situation where an invention would be obvious to try but nonobvious is when "what was 'obvious to try' was to explore a new technology or general approach that seemed to be a promising field of experimentation, where the prior art gave only general guidance as to the particular form of the claimed invention or how to achieve it."

Click below for more detail of the Federal Circuit's analysis of Kubin's claims.

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In a decision last month, the Federal Circuit reversed a district court's summary judgment to the plaintiff.  The district court had awarded damages after granting summary judgment of "validity" and infringement.

While the Federal Circuit agreed with the district court's construction of a disputed claim term, the court held the asserted claims were obvious as a matter of law.  Specifically, it was undisputed that all elements of the claim were present in two prior art references—the only dispute was whether sufficient motivation to combine the prior art existed.  The court, quoting KSR, observed "if a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.  That is clearly the situation here."  The combination of the features of the two references, according to the Federal Circuit, would produce results that were "entirely predictable and grounded in common sense."

More regarding Ball Aerosol & Specialty Container, Inc. v. Limited Brands, Inc. after the jump.

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In a recent decision, the Federal Circuit reversed a district court's denial of judgment as a matter of law of obviousness.  A jury held the claim at issue was not obvious, and the district court denied the defendant's post-verdict motion for judgment as a matter of law on the issue.

While the Federal Circuit affirmed the district court's construction of two disputed claim terms, according to the Federal Circuit, a single reference disclosing multiple embodiments in sequential drawings that disclosed all the claim limitations rendered the claim in question obvious.  

More details of Boston Scientific Scimed, Inc. v. Cordis Corp. after the jump.

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In a recent decision, the Federal Circuit affirmed a district court's grant of summary judgment of obviousness, but vacated and remanded the summary judgment of no contributory or inducing infringement of two other patents in suit related to recordable optical disk drive technology.  

The court relied on copyright cases applying the concept of secondary liability in determining that the district court applied the wrong legal standards for determining contributory infringement and inducement.  Guided by the Supreme Court decisions in Grokster and Sony, the court determined that a component that infringes in larger assembly cannot be insulated from a finding of contributory infringement, otherwise a liability loophole would exist.

Judge Gajarsa dissented.  He argued the majority committed three major missteps with respect to contributory infringement.  First, the alleged infringer did not sell or offer to sell the accused components as required by § 271(c).  Second, the majority used an over-inclusive application of § 271(c) that directly contravened Supreme Court guidance on its interpretation.  Finally, the conduct to which the majority objects related to the design and manufacture of components rather than the act of selling a component as addressed by § 271(c).

More on Ricoh Co. v. Quanta Computer, Inc. after the jump.

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The Federal Circuit recently reversed a district court's post-verdict grant of judgment as a matter of law of nonobviousness, applying the KSR obviousness standard and addressing the requirements for expert testimony for legal conclusions of obviousness. The Federal Circuit clearly set forth that patent attorneys without specific skill and training in the area of the technology involved in the patent-in-suit are not qualified to testify as experts regarding infringement and invalidity.

Specifically in this case, the Federal Circuit held it was an abuse of discretion to allow a patent attorney to testify as an expert regarding infringement or invalidity because he lacked experience in the field of the patent, here segmented tarpaulin systems.  As a result, his testimony did not meet the standard of admissibility of evidence under Rule 702.

This fact notwithstanding, the court still held there was sufficient evidence in the record to conclude the asserted claim was obvious.  The court characterized this case as much like KSR, where all elements of the claim were in the prior art and, in combination, their respective functions remained the same, producing no unexpected results.

More on Sundance, Inc. v. DeMonte Fabricating Ltd. after the jump.

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