Last October, we hosted an interdisciplinary conference about nonobviousness, here at Lewis & Clark Law School.

Several of the papers from the conference have now been published in the Lewis & Clark Law Review. You can snag pdfs of the articles at http://www.lclark.edu/org/lclr/current.html

It’s an interesting collection of psychologists, lawprofs, and an economist. I hope you’ll take a look.

Yesterday, the district court granted summary judgment in favor of promotional CD reseller Troy Augusto on his copyright exhaustion claim.

The Electronic Frontier Foundation, representing Augusto, has posted a pdf of the opinion here.

Those who wonder whether purported licenses on tangibles (”Not for resale,” etc.) can negate the exhaustion principle, in copyright or in patent, need to take a close look at Judge Otero’s analysis

Here’s yesterday’s New York Times story on the right-of-publicity suit arising from the commercial use of a Creative Commons-licensed photo found at Flickr.  I agree with Mike Madison: there are some deep questions here about Creative Commons.

I refer, of course, to Universal Music Group v. Augusto.

Augusto resold a UMG free promotional music CD on eBay. UMG alleges it’s copyright infringement.

EFF is on the case for Augusto, along with Keker & Van Nest.

Here’s the web page for pleadings, at EFF.

Tim Lee has written about the case, at both Ars Technica and The American.

A question I have … is the Bobbs-Merrill Co. case, the fountainhead of the first sale doctrine, any weaker now that the Supreme Court has, in the Leegin case, overturned the Dr. Miles case (which had held that resale price maintenance was a per se antitrust violation)? After all, the sale condition the book publisher purported to impose in Bobbs-Merrill was a resale price maintenance condition …

Mike Madison has an excellent post on free riding, over at Madisonian.

Check it out …

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.

Just two years after Graham and Adams, a patent litigator surveyed the principal nonobviousness cases and summarized them as follows:

At least since Hotchkiss, it has been the law that not every advance in science or the useful arts is worthy of a patent; some ingenuity, something more clever than the work of a routineer, is and always has been required. Give a problem to a man having average skill in some art or science, the problem being within his area of skill. If that man, seeing and understanding the problem, can without difficulty see the probable solution, which he then accomplishes, then there is not patentable invention. If, however, the problem defies solution by such men of skill until some clever fellow comes along with an answer, then there is a patentable invention. Or if practical solutions are apparent but one man reaches a better solution in an unorthodox way, there is a patentable invention.

Edward B. Gregg, Tracing the Concept of “Patentable Invention,“ 13 Villanova Law Review 98, 114 (1968).

It sounds quite right today, and consistent with KSR.

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.