Some Nonobviousness History – Long-felt Need Cases
Moving this post to the head of the page …
As I’ve mentioned, I’ve been reading lots of old appellate cases that resolve the nonobviousness question by relying heavily on the presence (or absence) of evidence of long-felt, unmet need before the claimed invention’s arrival. From that reading, I’ve developed a lengthy list of excerpts from the cases (both U.S. Supreme Court cases and U.S. Court of Appeals cases). Not surprisingly, Judge Learned Hand wrote the bulk of the excerpted cases. My list is available here as a pdf.
If you know of other long-felt need cases that should be on the list, please let me know
Exceptionally useful document – thanks
Comment by Paul Cole — January 11, 2008 @ 4:00 pm
Paul,
Thank you!
(And, if you’re the Paul Cole who wrote “Fundamentals of Patent Drafting” (CIPA 2006), I’m a great admirer of your work.)
Thanks for visiting …
Best,
Joe
Comment by Joe — January 11, 2008 @ 6:11 pm
Prompted by Paul, I opened the pdf. Paul is right (as usual). Thanks both.
Comment by MaxDrei — January 12, 2008 @ 2:01 pm
Joe, I’ve been browsing through your magnificent pool of cases, and am prompted to throw in a couple of stones, just to stimulate debate.
What strikes me is the copious mention in them, of problems solved by the claimed subject matter, and technical effects at last achieved. It reminds me of the approach developed by the EPO, which we can call PSA, in which we conduct the analysis of obviousness by toggling between claimed features and delivered effects. But I also think of that principle of patent law which allows validity attacks on the basis of a document (D1) deemed to be known by the PHOSITA, but not part of the real life general knowledge of the individual American engineers or scientists to whom your collected Decisions refer, and from whom the evidence of long felt want was laboriously and painstakingly collected. Maybe D1 is a Japanese or German publication, for example. While PSA addresses the artificial (but surely non-subjective) “objective” problem, your Decisions look at the problem, exposed by the (ex post facto created) Affidavit evidence, that real industry people were addressing in USA many years earlier, back at the relevant date. For me, the evidence of contemporaneous docs is more probative than that of Affidavits created by the litigants during the litigation.
Then I think of the countless thousands of attorney hours that went into these cases in your collection. How many of them were spent preparing Affidavit evidence concerning a problem other than the “objective” problem? For legal certainty, we want to know what the PHOSITA would have thought, when confronted with the “objective” problem, on the relevant date.
Which is what PSA does, of course. PSA demands that the PHOSITA be considered to be on a “starting point” in the published art, which would have been the most “realistic” for addressing the issue which the inventor announced in his app, that he wrote before the claim was filed at the PTO. Which is why PSA settles obviousness in about an hour towards the end of the working session, at EPO Hearings in which much more time is spent, before one gets to obviousness, arguing about equally crucial matters of clarity and novelty.
If there was a flaw in PSA, such that it is not neutral between the opposed parties, it would have been seen off long ago. But it’s still there, unassailable, because it is neutral.
Then I think about the HUGE cost of translations, for those who own patents in Europe, and the cacophany of complaint about the tendency of countries in Europe to insist on their own language. But I’m fairly sure that PSA has saved these owners, over the years, vastly more lawyer fees than all the money they’ve paid out since 1978 in translator fees.
Thoughts?
Comment by MaxDrei — January 13, 2008 @ 2:15 am
Max,
Is there comparison problem here? The EPO process you talk about isn’t the sort of process used to test inventive step in the context of an infringement proceeding, is it? Of the more than 50 cases I’ve excerpted in the document here, all but a few are cases where the obviousness issue came up in an infringement case (as a defense). How is the comparable question handled in infringement litigation in Germany, or the U.K.? If an alleged infringer can try to prove invalidity due to obviousness, isn’t the alleged infringer allowed to develop that invalidity case using the sort of evidence you highlight? If so, it seems like the matter really boils down to whether an alleged infringer should be allowed to attack the validity of the patent if sued for infringement. In the U.S., at least, it’s unthinkable that the PTO’s quite cursory assessment of validity would be made immune from later re-assessment in court.
Best,
Joe
Comment by Joe — January 13, 2008 @ 9:09 am
Thanks Joe, and YES there is a comparison problem, I agree. It is indeed a problem to decide whether the Statute should require the PTO to explore obviousness, pre-issue. In UK, under pre-1978 law, the PTO looked only at novelty. Obviousness couldn’t be judged fairly (we thought back then) without the spending of millions of dollars on evidence-gathering. So, to be fair to the inventor, one should leave it alone, till litigation.
But then along came the EPC, requiring the PTO to “do” obviousness pre-issue, and out of that came PSA.
Then, last year, Japan posed the question “Can we not set up a common regime to explore obviousness, that will run just as efficiently pre-issue in the PTO as post-issue, as a counter-claim to infringement, up to the Supreme Court. My thesis is that EPO-PSA (used pre-issue very economically and routinely) actually works increasingly better in disputed cases, the more the parties spend on evidence-gathering, and the closer one gets to the Supreme Court. Trouble is, nobody outside EPO circles (the EPO is divorced from infringement cases) yet knows how to operate PSA or realises, from personal and practical experience of it, how elegantly simple and neutral it is.
Comment by MaxDrei — January 13, 2008 @ 9:46 am
Hi. The link to the .pdf seems to be broken. Could you please fix it or email it to me? Thanks.
Comment by Matt P — April 13, 2008 @ 6:37 pm
Matt P,
I will fix it tomorrow morning, when I’m at work and have access to the pdf.
Thanks for the tip-off.
Best,
Joe
Comment by Joe — April 13, 2008 @ 8:43 pm
Matt P,
Link is fixed.
Best,
Joe
Comment by Joe — April 14, 2008 @ 8:28 am