Came across this, on the long felt need inference, a moment ago …

The fact that the invention seems simple after it is made does not determine the question; if this were the rule, many of the most beneficial patents would be stricken down. It may be safely said that if those skilled in the mechanical arts are working in a given field, and have failed, after repeated efforts, to discover a certain new and useful improvement, that he who first makes the discovery has done more than make the obvious improvement which would suggest itself to a mechanic skilled in the art, and is entitled to protection as an inventor.

Expanded Metal Co. v. Bradford, 214 U.S. 366, 381 (1909).

Happened to come across this a moment ago …

Indeed, it often requires as acute a perception of the relations between cause and effect, and as much of the peculiar intuitive genius which is a characteristic of great inventors, to grasp the idea that a device used in one art may be made available in another, as would be necessary to create the device de novo. And this is not the less true if, after the thing has been done, it appears to the ordinary mind so simple as to excite wonder that it was not thought of before. The apparent simplicity of a new device often leads an inexperienced person to think that it would have occurred to any one familiar with the subject; but the decisive answer is that, with dozens and perhaps hundreds of others laboring in the same field, it had never occurred to any one before. The practiced eye of an ordinary mechanic may be safely trusted to see what ought to be apparent to every one.

C & A Potts & Co. v. Creager, 155 U.S. 597, 607-08 (1895).

Earlier today, the Federal Circuit took formal note of the fact that the Supreme Court’s January 2007 decision in MedImmune v. Genentech eliminated the Federal Circuit’s “reasonable apprehension of suit” test for declaratory judgment jurisdiction in a patent infringement case. (I blogged this point about MedImmune the day after the decision, here.)

The Federal Circuit case is styled SanDisk Corp. v. STMicroelectronics, Inc., No. 05-1300 (Fed. Cir. March 26, 2007). Judge Linn writes for himself and Judge Dyk. Judge Bryson concurs in the result with a separate opinion.

Declaratory judgment plaintiff SanDisk had negotiated about a patent cross-license with d.j. defendant ST from August 2004 to October 2004. (ST had initiated the question by an April 2004 letter listing 8 ST patents and a July 2004 letter listing 4 more ST patents.) The negotiation meetings don’t strike me as unusually sharp or heated; and, at the end of the critical Aug. 27, 2004 day-long licensing meeting, ST’s IP Licensing VP stated to SanDisk’s Chief IP Counsel “that ‘ST has absolutely no plan whatsoever to sue SanDisk.’” Slip op. at 5. This case was a tough sell for jurisdiction under the “reasonable apprehension” test, and the District Court had thrown out SanDisk’s d.j. claims against ST’s 14 patents. Slip op. at 7.

Some key passages from the Federal Circuit’s opinion today:

• “The Supreme Court’s opinion in MedImmune represents a rejection of our reasonable apprehension of suit test.” Slip op. at 13.
• “In finding declaratory judgment jurisdiction in MedImmune, the Court specifically addressed and rejected our reasonable apprehension test … .” Slip op. at 14 (quoting MedImmune’s footnote 11 in full).
• “In the context of conduct prior to the existence of a license, declaratory judgment jurisdiction generally will not arise merely on the basis that a party learns of the existence of a patent owned by another or even perceives such a patent to pose a risk of infringement, without some affirmative act by the patentee. But Article III jurisdiction may be met where the patentee takes a position that puts the declaratory judgment plaintiff in the position of either pursuing arguably illegal behavior or abandoning that which he claims a right to do. We need not define the outer boundaries of declaratory judgment jurisdiction, which will depend on the application of the principles of declaratory judgment jurisdiction to the facts and circumstances of each case. We hold only that where a patentee asserts rights under a patent based on certain identified ongoing or planned activity of another party, and where that party contends that it has the right to engage in the accused activity without license, an Article III case or controversy will arise and the party need not risk a suit for infringement by engaging in the identified activity before seeking a declaration of its legal rights.” Slip op. at 14-15.
• “Under the facts alleged in this case, SanDisk has established an Article III case or controversy that gives rise to declaratory judgment jurisdiction. ST sought a right to a royalty under its patent based on specific, identified activity by SanDisk. For example, at the August 27, 2004 licensing meeting, ST presented, as part of the ‘license negotiations,’ a thorough infringement analysis presented by seasoned litigation experts, detailing that one or more claims of its patents read on one or more of SanDisk’s identified products. … ST communicated to SanDisk that it had made a studied and determined infringement determination and asserted the right to a royalty based on this determination. SanDisk, on the other hand, maintained that it could proceed in its conduct without the payment of royalties to ST. … SanDisk need not ‘bet the farm,’ so to speak, and risk a suit for infringement by cutting off licensing discussions[fn 3] and continuing in the identified activity before seeking a declaration of its legal rights.” Slip op. 17-18.
• “We decline to hold that Jorgenson’s statement that ST would not sue SanDisk eliminates the justiciable controversy created by ST’s actions, because ST has engaged in a course of conduct that shows a preparedness and willingness to enforce its patent rights despite Jorgenson’s statement.” Slip op. at 18.
• Two prior Federal Circuit decisions, other than Arrowhead, are repudiated by name: Cygnus Therapeutics Sys. v. ALZA Corp., 92 F.3d 1153 (Fed. Cir. 1996); and Phillips Plastic Corp. v. Kato Hatsujou Kabushiki Kaisha, 57 F.3d 1051 (Fed. Cir. 1995).

Judge Bryson, in his concurrence in the result, expresses concern over the breadth of the ruling: “Despite the references in the court’s opinion to the particular facts of this case, I see no practical stopping point short of allowing declaratory judgment actions in virtually any case in which the recipient of an invitation to take a patent license elects to dispute the need for a license and then to sue the patentee. Although I have reservations about the wisdom of embarking on such a course, I agree with the court that a fair reading of footnote 11 of the Supreme Court’s opinion in MedImmune compels that result … .” Concurring op. at 5.

It is thus easier than ever for a patentee to trigger declaratory judgment jurisdiction with an assertion of patent coverage over another’s product or process. This has consequences for, among other things, the availability of willfulness damages. Can one give notice that is sufficient to start the damages clock ticking but insufficient to support a claim for declaratory judgment of noninfringement or invalidity? We are now a long way, I think, from the Federal Circuit’s decision in SRI Int’l, Inc. v. Advanced Technology Labs., 127 F.3d 1462 (Fed. Cir. 1997). In SRI Int’l, the Federal Circuit expressly rejected ATL’s contention that a patentee notice letter was inadequate to start the clock running on willfulness damages unless it was adequate to trigger d.j. jurisdiction for the recipient accused infringer. According to the Federal Circuit, “[a]ctual notice may be achieved without creating a case of actual controversy in terms of 28 U.S.C. sec. 2201.” 127 F.3d at 1470. I seriously doubt that’s true anymore.

I think there’s wide agreement that one of the key indicia that an invention would not have been obvious is that it defied conventional wisdom in the art.  Rossman has this to say on the point …

We must remember that a man inexperienced in a given field often has a distinct advantage over the men who are experienced in that field.  First of all, he has nothing to lose, for his professional reputation is not at stake.  He also tackles his problem without any preconceived notions or theories.  He is, therefore, free to formulate his own theories or possible solutions of the problem.  He is not bound by any precedent in that field and he respects no authorities, because he is ignorant of the traditions and the achievements of this field.  He is less likely to follow the old groove than the man experienced in the field, for he has a fresh and unhampered outlook on the problem.  Another important advantage lies in the fact that he brings to the field a knowledge and outlook that the others in that field do not have.  This enables him to form novel and unusual combinations which would be considered folly by the experienced men even if merely suggested as a possibility.  The ignorance of the failure of others is also in his favor for he is not hesitant and doubtful.  He attacks his problem with confidence, courage, and great energy.  For these reasons an electrical engineer never connected the idea of sound transmission with an electromagnet.  The electrical engineer was immersed too much in his own field to see beyond it or combine it with facts from other fields.  The southern planters cleaned their cotton for many years by the manual labor of slaves.  They took it for granted that this was the only way it could be done, until Whitney came from New England where machines were replacing human labor and he showed them how it could be done.  The carriage makers could not possibly visualize any other motive power except horses for their carriages.  In the same way, we often find the experienced men in their respective fields to be conservative and with limited vision.  They accept what they find and seldom question authority.  For these reasons the amateur or the so-called outsider very often makes important inventions and discoveries.

Joseph Rossman, The Psychology of the Inventor: A Study of the Patentee 144-45 (2d ed. 1931).

See also Rossman Excerpt #1, and #2, and #3, and #4, and #5, and #6.

Are inventions primarily the product of the inventor’s creativity and acumen, or primarily the product of the problem situation’s structure and demands? (This is one of the key questions that has sparked my strong interest in the psychology of creativity.)

Rossman makes in interesting aside on this point …

Most of us have been taught to attribute the origin of an invention to a definite and known individual. The public loves to worship heroes in all walks of life and this is particularly true of inventors. Many of the popular stories of inventions appeal very greatly to the imagination. The biographers of the famous inventors have been chiefly responsible for stressing the genius of their inventors as the sole cause of their inventions. This is the heroic theory of invention which asserts “that without the one man whose life they are chronicling, a particular invention could not, or would not readily have been forthcoming.”

Joseph Rossman, The Psychology of the Inventor: A Study of the Patentee 134-35 (2d ed. 1931) (quoting R.C. Epstein, Industrial Invention: Heroic or Systematic?, 40 Q.J. Econ. 232 (1926)).

See also Rossman Excerpt #1, and #2, and #3, and #4, and #5.

In Chapter 8, Rossman reflects on the fact that some inventions are made by multiple people at around the same time.

Here’s part of his take …

One of the most interesting aspects of invention is that the minds of many inventors run in the same channel, so to speak. Year after year there are thousands of inventions which are re-invented. … It seems that when the same obstacles are presented to different people they will ultimately find a similar solution to the difficulty. This is, of course, a natural and expected happening. Given the same problem and the mechanical elements and physical limitations the number of possible practical solutions are limited and different people will, therefore, arrive at similar conclusions under such circumstances. … At any given level of our technical development and knowledge, certain problems will arise which could not have arisen before. The elements to solve these problems are found in the existing fund of knowledge and experience. Since the workers in any given field have the same common cultural background it follows that the current problems will direct them to the same solution.

Joseph Rossman, The Psychology of the Inventor: A Study of the Patentee 131-32 (2d ed. 1931).

See also Rossman Excerpt #1, and #2, and #3, and #4.

Prof. Tim Holbrook (Chicago-Kent) has a new essay up at Slip Opinions, the online supplement of the Washington University Law Review.

In his essay, which is entitled “Obviousness in Patent Law and the Motivation to Combine: A Presumption-Based Approach,” Holbrook (a) extracts a vital patent law design technique from Supreme Court decisions like Festo and Warner-Jenkinson, and then (b) uses that technique - guide the process of proof with presumptions - to craft a presumption-based approach to the nonobviousness inquiry.

Read Tim’s essay.  It’s excellent!

Another excerpt …

He is a man of original thoughts and constitutionally averse to blindly following the old way of doing things. Custom does not always represent the best way to carry on. The inventor questions any method of accomplishing a result or any piece of mechanism that for a long period has been accepted as good enough. Any practice that has been long continued frequently represents a rich field for the ingenious thinker. To be told that ‘his ideas were tried out years ago and were found to be no good’ does not necessarily discourage him. The inventor never acquiesces to tradition. He is not conventional but rather an innovator and leader. He is unhappy with things as they are and wants to change them. He is a non-conformist. He is dissatisfied with what he finds and wants to improve things. He has a strong desire to alter and to change.

Joseph Rossman, The Psychology of the Inventor: A Study of the Patentee 49 (2d ed. 1931).

See also Rossman Excerpt #1, and #2, and #3.

Another excerpt …

Inventors differ from non-inventors not on account of any peculiar characteristics, but merely in the nature of their psychological reaction to deficiencies in man’s handiwork. The tendency of the non-inventor is to ‘cuss’ deficiencies in his environment, whereas, the bent of the inventor is constructive criticism. He is characterized by the ‘this-is-the-way-to-do-it’ attitude. One of the important characteristics of the inventor is his ability to recognize industrial problems and needs and the possession of native ingenuity in utilizing his bag of tricks in contriving something to satisfy these needs.

Joseph Rossman, The Psychology of the Inventor: A Study of the Patentee 36 (2d ed. 1931).

See also Rossman Excerpt #1, and #2.

Another excerpt …

Finding it impossible to define invention the courts have resorted to the opposite method by defining what is not invention.  In this way a number of well-defined and clear rules or tests have been formulated.  The basic rule in patent law is that the exercise of ordinary mechanical skill is not invention.  Thus a machine which could be made by any mechanic when faced with a certain need would not be patentable because it merely involved ordinary mechanical skill.  Making parts stronger or lighter, duplicating parts, changing the size or degree of devices, omitting parts, changing their location, making them integral or adjustable or substituting them by a known equivalent is not considered to involve any invention because these changes are specific cases of mechanical skill.  Replacing one material by another or giving it a better finish would be obvious to anyone and, therefore, not patentable.  However, if the results produced by these changes are new and unexpected they will usually be regarded as patentable because in such cases they involve more than the ordinary mechanical skill of the workers in their respective fields.

Joseph Rossman, The Psychology of the Inventor: A Study of the Patentee 26 (2d ed. 1931).

See also Rossman Excerpt #1.