Invalidity
February 26, 2015
Brandon Baum
James Pistorino
U.S. 6,368,227
Presumption of Validity/Burden
“A patent shall be presumed to be valid. Each claim of a patent (whether in independent, dependent, or
multiple dependent form) shall be presumed valid independently of the validity of other claims….” 35
USC § 282
Invalidity must be shown by clear and convincing evidence
Presumption of Validity/Burden
Patents are not held to be “valid”
Patentee need only show that the patent is “not invalid”
In other words, the accused infringer cannot meet the burden of proof
Why?
Patent examiners are very experienced and knowledgeable
Thomas Jefferson was our first patent examiner
Einstein was a patent examiner (Swiss)
Patents are hard to get
The Patent Office Ensures All Requirements are Met
But . . .
The patent process is ex parte
This is the first time we’ve been able to participate
In the US and A, we believe in hearing both sides, in the power of cross-examination, in the wisdom and
common sense of juries, in the Seventh Amendment of the Constitution!
However . . .
The PTO is part of a bargain with inventor and the public
This bargain involves a number of players
We are here today as part of the overall process
Only now do the sides have equal bargaining power
Invalidating Patents Serves the Public
“There is a stronger public interest in the elimination of invalid patents than in the affirmation of a
patent as valid.” Nestier v. Menasha, 739 F.2d 1576 (Fed. Cir. 1984)
“It is as important to the public that competition should not be repressed by worthless patents, as that
the patentee of a really valuable invention should be protected in his monopoly” Lear v. Adkins, 395
U.S. 653, 664 (1969)
Challenge Individual Claims
Invalidate claims, not patents (inventorship exception)
Claim-by-claim analysis
Independent and dependent claims are considered separately
So even if independent claim 1 of the stool patent is invalid, if dependent claim 2 recites “the stool of
claim 1 wherein the seat portion is comprised of graphene molecules,” claim 2 may still be valid as novel
Invalidate using “prior art”
Prior art = knowledge that existed at or before the time of invention or application for the patent
The patent system rewards those who advance the useful arts through the disclosure of new and
nonobvious inventions
That which is not new, or is an obvious variation on what was known, does not promote the useful arts
Egbert – Public Use
Samuel Barnes invented double corset-springs.
Barnes let his “intimate friend” wear publicly (under her clothes).
“The inventor slept on his rights for eleven years.”
Egbert – Public Use
Held: Bar. Public use, though unobserved, is a bar to a claim “if its inventor sells a machine of which his
invention forms a part, and allows it to be used without restriction of any kind, the use is a public one."
Egbert – Public Use
What if Barnes and his “intimate friend” had been married at the time of the use?
On sale bar
Frequently involves offers for sale by others, who tried and failed in the field
Sometimes involves offers for sale by patentee, who later claims the thing offered was not yet “ready
for patenting”
Look for early investors, failed competitors, your own product people.
Prior Art Searches and Defenses
Always investigate the accused product
The accused product or a prior version may be prior art or lead to other prior art
Hardly any ideas are totally new
Cases from the Federal Circuit hold that if the accused product was on sale before the critical date, no
claim construction is necessary to determine invalidity
Important in pharma and mechanical/electrical cases
Trolls can be sloppy
Prior Art Searches and Defenses
Consider yourself a detective
Software
for non-web software, programmers typically keep trophy copies
WayBack Machine – Internet Archive
eBay, Weird Stuff Warehouse, Halted
Good sources of old copies of software, electronics, etc.
It is always best to get a physical product/working copy for trial
Prior Art Searches and Defenses
LinkedIN
Good place to find former employees of companies
If an engineer worked on a product, he is likely to have one
Libraries
Old magazines are a great source for articles and particularly advertisements about prior art products
Prior Art Searches and Defenses
People
Most people are helpful and want to tell a story about something they developed
Giving people a little money never hurt,
sign people up as consultants and pay them for their time
Ask who they would call
You will almost always find someone who was a pack rat and kept everything
Prior Art Searches and Defenses
Be Careful
If you contact a prior art person and they have their own patents, you may prompt them to bring their
own suit
Some people will see your contact as the lottery ticket and try to extort money to "remember" the facts
Electronic Prior Art
Websites
An electronic publication, including an on-line database or Internet publication, is considered to be a
"printed publication" within the meaning of 35 U.S.C. § 102(a) and (b) if it was accessible to persons
concerned with the art. In re Wyer, 655 F.2d 221 (Fed. Cir. 1981)
The Wayback Machine (www.archive.org)
Software
Software products are prior art as of the date they were first installed or released. In re Epstein, 32 F.3d
1559 (Fed. Cir. 1994).
Let’s talk about cats . . .
Go to Google Groups
Applying the prior art to the patent-in-suit
We know what qualifies as prior art under 102
How to show the patent-in-suit is not valid in light of the prior art?
What is Enough to Anticipate?
A claim is “anticipated” if every element in the claim is shown or described in the prior art reference
arranged as in the claim. Therasense v. Becton, Dickinson, 593 F.3d 1325, 1332 (Fed. Cir. 2010).
“That which will infringe, if later, will anticipate if earlier.” Knapp v. Morss, 150 U.S. 221 (1893).
103 - Obviousness
35 USC 103(a) “A patent may not be obtained though the invention is not identically disclosed or
described as set forth in section 102 of this title, if the differences between the subject matter sought to
be patented and the prior art are such that the subject matter as a whole would have been obvious at
the time the invention was made to a person having ordinary skill in the art to which said subject matter
pertains. Patentability shall not be negatived by the manner in which the invention was made.”
103 - Obviousness
103 - Obviousness
4 Factual Inquiries
Graham v. John Deere
1. What is the scope and content of the prior art?
2. What are the differences between the prior art and the claims at issue?
3. What is the level of ordinary skill in the pertinent art at the time the invention was made?
4. Does any objective evidence of nonobviousness exist?
4 Factual Inquiries
Graham v. John Deere
1. What is the scope and content of the prior art?
Anything that qualifies under 35 USC 102
4 Factual Inquiries
Graham v. John Deere
2. What are the differences between the prior art and the claims at issue?
How are the claims different than the prior art?
4 Factual Inquiries
Graham v. John Deere
3. What is the level of ordinary skill in the pertinent art at the time the invention was made?
A higher level of ordinary skill means an invention is more likely to be obvious.
4 Factual Inquiries
Graham v. John Deere
4. Does any objective evidence of nonobviousness exist?
A lengthy list of factors that help us avoid hindsight.
Also called “secondary considerations,” though by no means are they “secondary” in importance
Under the old (pre-KSR) rules, the Examiner could not combine references unless there was some
express teaching, suggestion or motivation to do so
Level of Ordinary Skill (PHOSITA)
(1) the levels of education and experience of persons working in the field;
(2) the types of problems encountered in the field; and
(3) the sophistication of the technology.
Significance of PHOSITA
In Daiichi Sankyo Co v. Apotex , (Fed.. Cir. July 11, 2007) the district court determined that a PHOSITA
would be a pediatrician or a general practitioner who has experience treating ear infections. Therefore,
a 1986 article regarding the effectiveness of a compound similar to the patented compound in treating
ear infections was outside the scope of the prior art because it was written for otologists, not
pediatricians and other general practitioners.
The Federal Circuit disagreed, holding that a person skilled in the art would be an expert in formulating
new pharmaceuticals and a specialist in ear treatments. Accordingly, the patent would have been
obvious and therefore invalid.
Scope and Content
What is the relevant art?
All arts reasonably related to the invention, including analogous arts—arts to which the subject matter
of the invention pertains.
Use PTO classifications if they help you
Analogous Art
In order to be considered as prior art, the references must be reasonably related to the claimed
invention of that patent. A reference is reasonably related if it is in the same field as the claimed
invention or is from another field to which a person of ordinary skill in the field would look to solve a
known problem.
N.D. Cal Model Instruction
103(a) Obviousness
What counts as 103(a) art?
Anything that qualifies as art under 102
102(a): patent, printed publication, known or used by others
102(b): patents one year before filing.
102(e): prior patent application, even though not publicly known.
102(f): disclosures made to the patentee, even if not publicly known.
102(g): prior inventions not abandoned, suppressed or concealed.
Significance of PHOSITA in preparing your obviousness case
Make sure the expert you retain will qualify under your definition of a PHOSITA
Where patent is being stretched to cover technology not originally contemplated by inventors, how
does that impact the definition
Patentee wants to argue that “Judge will tell you that this patent is written for a PHOSITA of digital
communications technology, so defendant is wrong to say we are stretching this hearing aid patent.”
Hindsight Not Permitted
The point in time that is critical for an obviousness determination is at the time the invention.
“To imbue one of ordinary skill in the art with knowledge of the invention in suit, when no prior art
reference or references of record convey or suggest that knowledge, is to fall victim to the insidious
effect of a hindsight syndrome wherein that which only the inventor taught is used against its teacher.”
W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983).
Combination not required
A single prior art reference combined with the knowledge of one of ordinary skill can render an
invention obvious if there was a motivation to modify the reference. See SIBIA, 225 F.3d 1349, 1357.
Patentee’s Response - secondary considerations of nonobviousness
Commercial success
Long felt need
Failure of Others
Copying
Unexpected results
Acceptance of licensees
Patentee’s Response
Beef stew
Blind man and the elephant
Def’s expert is not one of ordinary skill, expert has extraordinary skill
Def’s expert never made the combination, nor did the prior art authors
Obvious?
Don’t Forget Inventorship...
Patent application must name all and only inventors
Mis/non-joinder will invalidate patent
Choice of asserting mis/non-joinder or seeking connection of inventorship
Burden on challenger, by clear and convincing evidence