Kleen-Tex: Nonobviousness at Trial
I missed this one in March, but, happily, my Westlaw tracking just picked it up …
In March, Judge Camp, U.S. District Judge for the Northern District of Georgia, issued his opinion in a bench trial in a patent case. Among the issues Judge Camp decided is whether Kleen-Tex’s asserted claims would have been obvious. Judge Camp’s opinion is a model of clarity and thoroughness. If you want to see nonobviousness analysis at its careful best, you can’t do better than Judge Camp’s Kleen-Tex decision.
Lucky for us, it’s available as a pdf through the good work of Coby Nixon’s excellent Georgia Patent Law Blog. He summarizes Kleen-Tex here.
In sum: Read Kleen-Tex. And check out Nixon’s blog!
Hi Joe:
The willfulness ruling (a la Seagate/Black & Decker) in the case is astounding. Court finds there was intentional infringement but can’t find it willful since the litigation defenses were “plausible.” I’ll be addressing this aspect of the case in the next newsletter going out later this week.
(I don’t think Westlaw posted the case until last week. That’s when it popped up my daily search of additions to the WL IP database).
Best regards,
Bob
Comment by Bob Matthews — June 30, 2008 @ 7:26 am
Hi, Bob.
I look forward to seeing your take on the willfulness question. Not surprisingly, I focused more on the nonobviousness analysis.
Best,
Joe
Comment by Joe — June 30, 2008 @ 7:44 am
Great case on obviousness Joe. On the evidence, I think the EPO would have come to the same result. But, it is fun to contemplate what might have happened at the EPO, on this fact matrix, if the evidence adduced by the parties had been put together with the EPO approach to inventive step as the template. So, it’s also a good teaching case for me in Europe.
Comment by MaxDrei — June 30, 2008 @ 9:17 am
Is it just me, or was the judge’s focus on the secondary considerations a somewhat implicit acknowledgement that the prior art made out a prima facie case?
While such evidence will generally come to light during litigation, such story telling during prosecution is often not done. Preparing the Rule 132 Declarations necessary to get such evidence in the record is time consuming and expensive. And you can never be sure that the examiner will actually give it the weight it deserves. Particularly in the “quality = reject, reject, reject” culture that currently rules the PTO. Although I have heard that OPQA and/or second eyes will generally not hold up an allowance that is the result of a traversal including a 132 Dec.
Max, are you sure this would have had the same result in the EPO? Without the evidence of the long felt need and failure of others, unless they were discussed in the background, how could the patentee have successfully argued that the technical features recited in the claim solved an objective technical problem not addressed/solved by the prior art?
Comment by JD — June 30, 2008 @ 2:54 pm
On the face of the Decision, the Applicant or Patent Owner would have won at the EPO without any recourse to secondary evidence. The Problem and Solution Approach would spit out the answer “inventive – have a patent” after 5 minutes. It’s just that an Opponent at the EPO would have adduced evidence that the “surprising” technical effect is a chimera. Then the fun of inter Partes proceedings, before a technically competent tribunal, would begin in earnest. As I say Joe, a great case to study.
Comment by MaxDrei — July 2, 2008 @ 12:20 am