There are already 31 BPAI opinions applying KSR to appeals from Examiners’ obviousness rejections. I list them on my post-KSR resource page.

The following passage from KSR appears to be a Board favorite: “As our precedents make clear, however, the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.”

Mere course correction?  No … sea change.

The nonobviousness statute, 35 U.S.C. sec. 103, contains a subsection specially tailored to the patentability of biotechnological processes. It is sec. 103(b). Kevin Noonan has a wonderful post at Patent Docs that explains the sense in which KSR may have breathed quite a bit of new life into subsection (b)’s special rule for these process claims.

On May 10, 2007, the Board of Patent Appeals & Interferences issued two “unpublished” decisions in appeals from obviousness rejections. In one appeal, the Board affirmed the rejections. In the other, the Board reversed the rejections. The Board panels applied aspects of KSR in their respective decisions.

The cases are listed on my resource page for tracking post-KSR opinions about nonobviousness.

Today, the Federal Circuit issued its first precedential post-KSR decision on the question of obviousness. In the case, Leapfrog Enterprises, Inc. v. Fisher-Price, Inc., No. 06-1402 (Fed. Cir. May 9, 2007), the Federal Circuit (Judge Lourie, writing for himself and Judges Mayer and Dyk) affirms a trial court’s bench trial determination that the claimed invention would have been obvious.

The case is a “must read.” The Federal Circuit embraces the KSR Court’s cautious attitude toward combination claims. The following paragraph is indicative:

We agree with Fisher-Price that the district court correctly concluded that the subject matter of claim 25 of the ’861 patent would have been obvious in view of the combination of Bevan, the SSR, and the knowledge of one of ordinary skill in the art. An obviousness determination is not the result of a rigid formula disassociated from the consideration of the facts of a case. Indeed, the common sense of those skilled in the art demonstrates why some combinations would have been obvious where others would not. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. __, 2007 WL 1237837, at *12 (2007) (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”). Thus, we bear in mind that the goal of the claim 25 device was to allow a child to press a switch associated with a single letter in a word and hear the sound of the letter as it is used in that word. In this way, the child would both associate the sound of the letter with the letter itself and be able to sound out the word one letter at a time to learn to read phonetically. Accommodating a prior art mechanical device that accomplishes that goal to modern electronics would have been reasonably obvious to one of ordinary skill in designing children’s learning devices. Applying modern electronics to older mechanical devices has been commonplace in recent years.

Slip op. at 8.

The following two paragraphs are also, to me, especially striking:

We agree with the district court that one of ordinary skill in the art of children’s learning toys would have found it obvious to combine the Bevan device with the SSR to update it using modern electronic components in order to gain the commonly understood benefits of such adaptation, such as decreased size, increased reliability, simplified operation, and reduced cost. While the SSR only permits generation of a sound corresponding to the first letter of a word, it does so using electronic means. The combination is thus the adaptation of an old idea or invention (Bevan) using newer technology that is commonly available and understood in the art (the SSR). We therefore also find no clear error in the finding of the district court that one of ordinary skill in the art could have utilized the electronics of the SSR device, with the method of operation taught by Bevan, to allow a child to press each individual letter in a word and hear the individual phonemes associated with each letter to sound out the words.

This combination of Bevan and the SSR lacks only the “reader” of claim 25 of the ’861 patent. The district court found that readers were well-known in the art at the time of the invention. As there is ample evidence in the record to support that finding, we find no clear error in the court’s determination. Furthermore, the reasons for adding a reader to the Bevan/SSR combination are the same as those for using readers in other children’s toys — namely, providing an added benefit and simplified use of the toy for the child in order to increase its marketability. Leapfrog presents no evidence that the inclusion of a reader in this type of device was uniquely challenging or difficult for one of ordinary skill in the art. See KSR, 2007 WL 1237837, at *15. Nor does Leapfrog present any evidence that the inclusion of a device commonly used in the field of electronics (a reader), and even in the narrower art of electronic children’s toys, represented an unobvious step over the prior art. Our conclusion is further reinforced by testimony from the sole inventor at trial that he did not have a technical background, could not have actually built the prototype himself, and relied on the assistance of an electrical engineer and Sandia National Laboratory to build a prototype of his invention.

Slip op. at 10-11.

The only time the Federal Circuit refers to the question whether the prior art provided a motivation to combine the prior art references is in describing Leapfrog’s rejected contentions. The words “suggest” and “suggestion” do not appear anywhere in the court’s opinion.

UPDATE: Here’s Patent Prospector’s take on the case, with extended excerpts.

UPDATE 2: And Dennis Crouch’s take at PatentlyO.

A district court judge has applied not only MedImmune, but also SanDisk and Teva, to determine whether declaratory judgment jurisdiction exists after a patentee has sent a routine licensing letter. Answer? “Yes.”

Here’s the key language from the court’s brief opinion denying the patentee’s motion to dismiss:

There is no reasonable way to distinguish the circumstances of this case from that held by the Sandisk court to confer upon this Court Article III jurisdiction over Crutchfield’s declaratory judgment complaint. In its May 2006 letter to Crutchfield Hill clearly enunciated its intent to assert its right to seek a licensing agreement under its patents with Crutchfield. In addition, the letter makes clear that, as an Internet retailer, Hill put Crutchfield in the same category as other Internet retailers against whom Hill had filed a patent infringement suit. Furthermore, it is clear that Hill was of the opinion that Crutchfield was engaging in allegedly infringing activity or it would not have offered a license in the first place. Having been put on notice that Hill had Crutchfield within its sight, Crutchfield sought to confirm its position that it did not infringe by filing the instant declaratory judgment action.

Hill asserts that the Court should require Crutchfield to notify Hill of its claims that it does not infringe and that one of Hill’s patents is invalid or to enter into license negotiations before Crutchfield seeks intervention from the Courts because, otherwise, there is no substantial controversy. This carries the standard enunciated by the Supreme Court too far. The only requirement is that the circumstances show “a substantial controversy, between parties having adverse legal interests, of sufficient immediacy and reality to warrant the issuance of a declaratory judgment.” MedImmune, 127 S.Ct. at 771. The content of the May 2006, letter, including the clear articulation of Hill’s willingness to litigate against potential infringers of the patents in suit, its offer of a license to Crutchfield under its patents, and its request for a response by a date certain, indicate to any reasonable reader that a substantial controversy exists between parties with adverse legal interests and it is of sufficient immediacy and reality to warrant the issuance of a declaratory judgment. Furthermore, Crutchfield’s counsel had first-hand knowledge of Hill’s patent enforcement tactics and self-proclaimed goals. Coupled with the letter, Crutchfield was faced with a decision to agree to a license or seek a declaration that it does not infringe or that the patents in suit were invalid. There has never been a requirement that a declaratory judgment plaintiff inform its adversary before it files suit; this Court will not change that long-standing practice under the circumstances presented here.

Crutchfield New Media, LLC v. Charles E. Hill & Assocs., Inc., No. 06-0837, 2007 WL 1320750 (S.D. Ind. May 4, 2007).

In KSR, the Supreme Court emphatically reaffirms its commitment to a principle that long predates section 103 and the Graham framework:

Neither the enactment of §103 nor the analysis in Graham disturbed this Court’s earlier instructions concerning the need for caution in granting a patent based on the combination of elements found in the prior art. For over a half century, the Court has held that a “patent for a combination which only unites old elements with no change in their respective functions . . . obviously withdraws what is already known into the field of its monopoly and diminishes the resources available to skillful men.” Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340 U. S. 147,152 (1950). This is a principal reason for declining to allow patents for what is obvious. The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.

Compare this from Great Atlantic & Pacific Tea Co.:

Courts should scrutinize combination patent claims with a care proportioned to the difficulty and improbability of finding invention in an assembly of old elements.

340 U.S. at 152.

In May 2006, I proposed that we use a presumption framework in analyzing nonobviousness.  In my proposed framework,

[a] If the pertinent prior art contains all the elements in the claim serving their prior art functions, the examiner should make an initial rejection of the claim. [b] At this point, the burden of production and persuasion would shift to the applicant to overcome the presumptive obviousness of the claim. [c] The only evidence the Patent Office should accept in rebuttal is clear proof that the prior art expressly taught away from making the combination in the claim under review, or that identifiable others had tried and failed to solve the problem the applicant has successfully solved.

This is close to exactly what the KSR Court requires through its demand for “caution in granting a patent based on the combination of elements found in the prior art.”

In March 2007, I posted a reference to Tim Holbrook’s presumption framework proposal.  It, too, gets at a great deal of what the KSR Court requires.

Does anyone have a citation to an electronic copy of the district court’s injunction order in the Verizon / Vonage case?  Or an electronic copy you’re willing to send by e-mail? I would like to add the case to my post-eBay Injunction Cases resource page.

I’ll collect links to other analyses of KSR that I find helpful or interesting. And I’ll update the post throughout the next day or two.

1. Michael Barclay (of Wilson Sonsini), at SCOTUSblog
2. Dennis Crouch, at PatentlyO
3. The Wikipedia page about the case
4. Dan Bromberg (of Quin Emanuel), at SCOTUSblog
5. Peter Zura, at 271 Blog
6. Stephen Albainy-Jenei, at Patent Baristas
7. Greg Mandel, at PatentlyO
8. Fred Yen, at Madisonian
9. Shubha Ghosh, at PatentlyO
10. Jim Rapoza, at eWeek
11. Kevin Noonan, at Patent Docs
12. [ … ]

Margaret Focarino, Deputy Commissioner for Patent Operations, has issued a memo today to Technology Center Directors. The memo discusses the KSR case.

I’ve created a new resource page, The Nonobviousness Standard. On it, I’ll keep a running list of post-KSR cases that analyze a nonobviousness question.

There’s already one entry on the page … today’s decision in Syngenta Seeds.

( My other resource pages - one about eBay, and the other about MedImmune - are linked on the right hand side of TFOG’s main page.)