Long felt, unmet need – And level of skill in the art?
I’m reading lots of pre-1982 circuit court cases about nonobviousness. In doing so, I came across the following twist on thinking about evidence of long felt, unmet need in the art: rather than treat it as a secondary consideration separate and apart from the traditional Graham factors, use it as a concrete way to determine the level of skill in the art at the time the invention was made.
Here’s the court’s analysis in Reeves Instrument Corp. v. Beckman Instruments, Inc., 444 F.2d 263, 271-72 (9th Cir. 1971):
Whether this difference [between the claimed invention and the prior art] rises to the level of patentability depends upon the level of ordinary skill in the pertinent art. It is difficult to set forth any meaningful quantitative evaluation of the level of skill in a given art. Rather, such determination can be made only by an analysis of the problem allegedly solved by the invention and the efforts of others to arrive at a satisfactory solution. In this respect, the Supreme Court has noted that “[s]uch secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented.” Graham v. John Deere Co., supra at 17-18.
Definitely going to be on the lookout for more examples of this approach. It strikes me as extremely promising, especially in the post-KSR world of greater focus on the ordinary artisan’s ordinary creativity.
Nice proposition. Hope it stimulates a lively thread. What I like about “long felt want”, and dislike about “commercial success”, is that the former looks at the pre-existing fact matrix and the latter looks at stuff that didn’t even exist at the decisive point in time. I would rather that the ticklish question “Obvious or not, on date X” be determined on the basis of facts that existed prior to date X rather than out of “post facto’s”, like commercial success. Myself, I’ve never understood how eventual commercial success, years after date X, can say anything useful about whether the subject matter of a claim was “lying in the road” of technical progress years earlier, in a given technical field, on date X. But then, I’m irrecoverably corrupted by now, by operating under the EPO’s unassailable “Problem and Solution Approach”, which rigorously excludes hindsight, and ex post Facto analysis.
Comment by MaxDrei — December 29, 2007 @ 1:12 pm
Max,
Couldn’t agree more about commercial success. It seems to me that a strong case of worthy commercial success evidence is one where there is also strong long-felt-but-unmet-need evidence. Of course, with the latter in hand, there’s little need for the former.
What’s especially compelling about the Reeves case, for me, is moving the long felt need evidence into the level of skill rubric.
Best,
Joe
Comment by Joe — December 29, 2007 @ 3:16 pm
Joe, I haven’t read Reeves so I’m just going with your flow, but isn’t the level of skill in the end a “squeeze” argument between obviousness and sufficiency? If the Inventor can navigate his claim through this channel, between the Scylla of “something in the claim is obvious” and the Charybdis of “something in the claim is not sufficiently disclosed” then he’s done enough to hold on to his claim. Both the Inventor and the Petitioner for Revocation will pray in aid the situation ion the technical field, contemporaneous with the date of the claim, and any “long felt want” will help the party contending that the subject matter, at that date, wasn’t obvious. So, hasn’t LFW always been bound it with deliberations what was obvious?
Comment by MaxDrei — December 30, 2007 @ 2:18 am
I taught my patent law students this semester that the the “compare” step in Graham is essentially a crapshoot post KSR, and the only way to really persuade one way or the other is to focus on the secondary factors. I also pointed them to the Adams case as a great example of obvious analysis – in many ways it is much more illuminating than Graham as to how the analysis should proceed.
Comment by Michael Risch — December 30, 2007 @ 3:59 am
Michael,
I agree that Adams is a great exemplar; it’s also interesting to see the way that KSR holds up Adams for just this reason.
I’m not quite on board for “essentially a crapshoot.” But perhaps I’m just being optimistic.
Best,
Joe
Comment by Joe — December 30, 2007 @ 7:41 am
I just read Adams. Strikes me it’s (amongst other things) a template against which to test the EPO Problem and Solution Approach to obviousness, which involves toggling back and forth between “technical features” that are what defines the invention in the claim, and “technical effects” delivered by that feature combination, which are decisive to the obviousness issue. In Adams, the court keeps referring to the technical success of “the Adams battery” which it equates with the feature combination of claim 1. My hunch is that at least one technical feature crucial to technical operability is lacking from claim 1 in the suit, rendering claim 1 bad, despite the evident inventive merit of “the Adams battery”. If so, the “right” result might have been “Valid, but only when the independent claim has been amended, to include all the features needed to solve the objective problem”. The world needs a patent system which rewards an inventor with a scope of monopoly no wider than his/her contribution to the art justifies. I suspect that the Adams case might not demonstrate that philosophy.
Comment by MaxDrei — December 30, 2007 @ 8:37 am
please somebody give me a link to the Adams case.
Comment by Chaho — January 5, 2008 @ 7:43 am
Chaho,
The case we’re referring to is United States v. Adams, 383 U.S. 39 (1966). You can read it at
http://supreme.justia.com/us/383/39/case.html
Best,
Joe
Comment by Joe — January 5, 2008 @ 8:02 am
There is a very interesting common feature of the Graham and post-Graham patents held invalid by the Supremes.
It is worth downloading and looking at the patents in these cases. The Graham patent said NOTHING about the importance of reversing the bracket and the spring element. In the Pavement Salvage case putting the two units together was never labelled as significant. In the Sakraida case, the sudden rush of water was never hinted at as being inventive.
In contrast, in Adams, water-activation was a feature from the beginning.
MORAL: When you write your patent, state what the invention achieves, otherwise in an infringement trial the Court may take no notice of the feature you belatedly allege is clever.
Comment by Paul Cole — January 11, 2008 @ 4:14 pm
Paul,
Agreed. Indeed, in Graham, the Supreme Court was openly dismissive of the somewhat post hoc explanation the patentee gave about a flexing problem allegedly solved by the patent under review.
Best,
Joe
Comment by Joe — January 11, 2008 @ 6:06 pm