cohen

Advanced Patent Law Seminar Cover Page - i

Policing Obvious Patents – Motivation to Combine versus Synergy

Jayson L. Cohen – October 25, 2005



Policing Obvious Patents – Motivation to Combine versus Synergy

Jayson L. Cohen

Section Contents Page

Framing the What is the Obviousness Standard: Motivation to Combine, Synergy, Case-by- JLC – 1

Need for a Case, or All Three? Jayson L. Cohen.

Standard of

Obviousness Who‟s Who in The FTC Report? Jayson L. Cohen. JLC – 1



35 U.S.C. § 103(a), enacted 1952 and never amended JLC – 2

The Motivation

to Combine –

In re Oetiker (Fed. Cir. 1992, Nies, Newman, Plager) JLC – 2

Variations in

Metal hose clamp with preassembly hook found to be nonobvious.

the Standard

Chief Judge Nies, concurring. Trend in the motivation to combine standard. JLC – 3



Federal Trade Commission, To Promote Innovation: The Proper Balance of JLC – 4

Innovation

Competition and Patent Law and Policy (“The FTC Report”) (2003)

Policy and the

The FTC and DOJ held hearings and accepted submissions.

Motivation to

The FTC Report relies heavily on economic and antitrust thinking to guide its

Combine

insights into competition and innovation in the patent system.



CCPA In re Shaffer (C.C.P.A. 1956, O‟Connell, Johnson, Worley, Cole) JLC – 9

Motivation was Electrically controlled titration found to be nonobvious.

In; Synergy Judges Johnson, O‟Connell, and Worley each served as Chief Judge on the

was Reconciled Court of Customs and Patent Appeals.



Synergy is alive

Sakraida v. Ag Pro (Sup. Ct. 1976, Brennan) (unanimous) JLC – 10

in the Court‟s

Cow manure disposal system patent invalidated as obvious.

precedents



Cases Limiting the Role of Synergy in the Seventh and Federal Circuits:



I. Summary Information Chart for the Following Cases on Synergy JLC – 13



II. Republic v. Schlage Lock (7th Cir. 1979, Swygert, Cummings, Pell). JLC – 13

Hydraulic door closer patent invalidated as obvious. Sakraida discussed.

Federal

Circuit

III. Stratoflex v. Aeroquip (Fed. Cir. 1983, Markey, Davis, Baldwin). JLC – 14

Motivation to

Conductive Teflon tubing patent invalidated as obvious. Sakraida not cited.

Combine is In;

Synergy is Out

IV. Medtronic v. Cardiac Pacemakers (Fed. Cir. 1983, Markey, Bennett, JLC – 14

Cowen). Pacemaker patents invalidated as obvious. Sakraida discussed.



V. American Hoist v. Sowa (Fed. Cir. 1984, Rich, Cowen, Kashiwa). Shackle JLC – 15

patent (for ship anchors) remanded for new trial on obviousness. Sakraida

not cited, but Republic cited with approval.



Exh. 1 – In re Oetiker – Figures showing the preassembly hook. JLC – 16

Exhibits –

Patent Figures

Exh. 2 – Sakraida v. Ag Pro – Figures showing the cow manure disposal system. JLC – 16

I have edited the following materials extensively. I have reformatted text and have made wholesale deletions, such as deletions

of record citations. I have also used abbreviations, such as SJ and POSITA. My comments appear in curly brackets {typically

italicized}, and my emphases are bolded. The authors‟ original emphases are underlined without bolding. Cross-references refer

to the materials in this packet by page (e.g., {JLC-1}) and, if relevant, by line number (e.g., {JLC-1:1}). – JLC





JLC – i

Advanced Patent Law Seminar JLC, What is the Obviousness Standard? - 1

Policing Obvious Patents – Motivation to Combine versus Synergy JLC, Who’s Who in the FTC Report?

Jayson L. Cohen – October 25, 2005



FRAMING THE NEED FOR A alphabetical order, about the Hearing participants

STANDARD OF OBVIOUSNESS 55 quoted and cited at {JLC-4–8}:



 Burchfiel, Kenneth J. – Sughrue Mion, PLLC

Jayson L. Cohen

What is the Obviousness Standard: Motivation to  Cohen, Wesley M. – Prof. of Economics and

5 Combine, Synergy, Case-by-Case, or All Three? 60 Social Science, Carnegie Mellon University;

(2005) National Bureau of Economic Research

The cases graft a lot of judge-made law onto 35  Dickinson, Q. Todd – V.P. and Chief IP

U.S.C. § 103, which is not surprising. Before the Counsel, General Electric; formerly Howrey,

10 Patent Act of 1952, “obviousness” was what the 65 Simon, Arnold & White, LLP; former Under

Supreme Court precedents called “invention,” a Sec‟y of Commerce for IP and Dir. of the PTO

common law term of art. See, e.g., Graham v. John

Deere Co., 383 U.S. 1, 11-17 (1966) (reviewing the  Dreyfuss, Rochelle C. – Pauline Newman Prof.

history briefly). The motivation to combine is an of Law, N.Y.U. School of Law

15 example of judge-made law. One might think that 70

the “motivation to combine” doctrine is settled law  Duffy, John F. – Prof. of Law, The George

and that a factual finding of no motivation to Washington Law School; former Ass. Prof. of

combine is dispositive and fatal to the AI or to the Law, William and Mary School of Law

PTO. Gambro Lundia AB v. Baxter Healthcare

20 Corp., 110 F.3d 1573, 1578-79 (Fed. Cir. 1997). 75  Gambrell, James B. – Attorney at Law; Adjunct

Notably, however, the Supreme Court has never Prof., University of Texas School of Law

followed or mentioned a motivation to combine test.

Should the motivation to combine be such a critical  Kieff, F. Scott – John M. Olin Senior Research

factual question lurking behind every obviousness Fellow in Law, Economics, and Business,

25 determination? What about synergy? 80 Harvard Law School; Ass. Prof., Washington

University School of Law

For now, note only that the order of the materials

is purposefully topical and not strictly chronological.  Kitch, Edmund W. – Joseph M. Hartfield Prof.

I start with materials on the motivation to combine, in of Law, University of Virginia School of Law

85

30 part, because it is the current doctrine. I then move

 Kunin, Stephen G. – Oblon, Spivak, McClelland,

back to a time after the 1952 Patent Act when the

Maier & Neustadt PC; former PTO Deputy

motivation test was not always the main focus. By

Commissioner for Patent Examination Policy

proceeding in this way, we gain some insight into

how the law developed and what questions remain. 90  Levin, Richard C. – President and Frederick

William Beinecke Prof. of Economics, Yale

35 Jayson L. Cohen University

Who’s Who in THE FTC REPORT? (2005)

 Merges, Robert P. – Wilson Sonsini Goodrich

The FTC gathered information for THE FTC 95 & Rosati Distinguished Prof. of Law and

REPORT {JLC-4} from a variety of sources, including Technology; Dir., Berkeley Center for Law and

40 dozens of notable patent law professionals and Technology, University of California, Berkeley

economists. These participants testified at the 2002

FTC/DOJ Hearings on Competition and Intellectual  Newman, The Honorable Pauline – Circuit

Property Law and Policy in the Knowledge-Based 100 Judge, Court of Appeals for the Federal Circuit

Economy. Information about these participants, as (http://www.fedcir.gov/judgbios.html)

45 well as their testimonial transcripts, is available at the

FTC website, http://www.ftc.gov/opp/intellect/  Polk, Jr., C. Edward – Foley & Lardner LLP;

detailsandparticipants.htm. former Ass. Solicitor, Office of the Solicitor,

105 PTO

THE FTC REPORT {JLC-4} quotes these

50 testimonial transcripts extensively. The testimony  Quillen, Cecil D. – Cornerstone Research;

provided the FTC with emphatic opinions about the former General Counsel, Eastman Kodak Co.

Federal Circuit‟s obviousness doctrine. For

reference, I provide brief affiliation information, in 110  Wamsley, Herbert C. – Executive Dir.,

Intellectual Property Owners Association





JLC – 1

Advanced Patent Law Seminar 35 U.S.C. § 103 - 2

Policing Obvious Patents – Motivation to Combine versus Synergy Oetiker (1992, Newman)

Jayson L. Cohen – October 25, 2005



THE MOTIVATION TO COMBINE – 55 plastic . . . are affixable to clothing and the like

VARIATIONS IN THE STANDARD by sewing”.

Oetiker argues

[1] that there is no suggestion or motivation to

Patent Act of 1952, ch. 950, § 103, 66 Stat. 792, 798 the artisan to combine the teachings of the

(currently at 35 U.S.C. § 103(a) (2005)) 60 cited references, and

5 {Congress enacted the nonobviousness requirement [2] that Lauro is nonanalogous art.

as § 103 in 1952. A 1995 amendment designated this Oetiker concludes that these references were

paragraph as § 103(a) without changing the text.} improperly combined; that a POSITA, seeking to

solve the problem facing Oetiker, would not look

A patent may not be obtained . . .

65 to the garment art for the solution. Oetiker also

10 - if the differences between

argues that even if combined the references do not

 the subject matter sought to be patented

render the claimed combination obvious.

and

 the prior art The examiner stated that “since garments

- are such that the subject matter as a whole 70 commonly use hooks for securement”, a person faced

15 would have been obvious with the problem of unreliable maintenance of the

 at the time the invention was made pre-assembly configuration of an assembly line metal

 to a POSITA to which said subject hose clamp would look to the garment industry art. . .

matter pertains. . [T]his argument is not supportable. However, the

75 Board held that the Lauro reference [was]

In re Hans Oetiker “analogous art” because it relates to a hooking

20 977 F.2d 1443 (Fed. Cir. 1992) problem, as does Oetiker‟s invention.



[Before Nies, Newman, Plager. – JLC] The Board apparently reasoned that all hooking

80 problems are analogous. . . . The Commissioner

Oetiker appeals the decision of the Board of Patent states in his brief on appeal that

25 Appeals and Interferences, holding unpatentable . . . “[a] disengageable catch, such as that used by

all of the claims in patent application No. 06/942,694. Oetiker, is a common everyday mechanical

concept that is . . . employed in door latches and

I. PROCEDURE 85 electrical and other switches, as well as in the

hook and eye apparatus disclosed by Lauro”.

30 [The prima facie case is a procedural device: once the

No such references were cited, however. While this

examiner produces facts sufficient to prove

court may take judicial notice of common everyday

obviousness, the burden of production shifts to the

mechanical concepts in appropriate circumstances,

applicant to attempt to rebut the examiner‟s case.

90 the Commissioner did not explain why a “catch” of

The adjudicator decides obviousness as a matter of

unstated structure in an electrical switch, for

35 law based on all of the evidence on the record.]

example, is such a concept and would have made

***

Oetiker‟s invention obvious. Indeed, the

II. THE MERITS

Commissioner did not respond to Oetiker‟s argument

95 that the cited references provide no teaching or

Oetiker‟s invention is an improvement in a

40 “stepless, earless” metal clamp, a hose clamp that suggestion that Lauro‟s molded hook and eye

was generally described in an earlier „004 patent of fastener, even if combined with Oetiker‟s „004

Oetiker, but that differs [due to the addition] of . . . a clamp, would achieve Oetiker‟s purpose.

preassembly “hook”. This “hook” serves both

100 [T]o rely on a reference [to reject an] applicant‟s

[1] to maintain the preassembly condition

invention, the reference must either be in the field of

45 of the clamp and

the applicant‟s endeavor or, if not, then be

[2] to be disengaged automatically when

reasonably pertinent to the particular problem

the clamp is tightened.

with which the inventor was concerned. Patent

{Please see Exhibit 1 at JLC-16:3–23. – JLC} 105 examination is necessarily conducted by hindsight,

50 The cited references were Oetiker‟s earlier- with complete knowledge of the applicant‟s

granted „004 patent, combined with a certain Lauro invention, and the courts have recognized the

„400 patent. Lauro describes a plastic hook and eye subjective aspects of determining whether an

fastener for use in garments, in which inventor would reasonably be motivated to go to

“unitary tabs of sewing needle puncturable 110 the field in which the examiner found the









JLC – 2

Advanced Patent Law Seminar Oetiker (1992, Newman) - 3

Policing Obvious Patents – Motivation to Combine versus Synergy Oetiker (Nies, concurring)

Jayson L. Cohen – October 25, 2005



reference, in order to solve the problem In re Gorman, 933 F.2d [982,] 986 (Fed. Cir. 1991),

confronting the inventor. [I]t is necessary to and

consider “the reality of the circumstances”, In re 60 “what the combined teachings . . . would have

Wood, 599 F.2d 1032, 1036 (C.C.P.A. 1979) -- in suggested to one of ordinary skill in the art,”

5 other words, common sense -- in deciding in which In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991). We

fields a POSITA would reasonably be expected to have also stated that

look for a solution to the [inventor‟s] problem. “the prior art as a whole must suggest the

65 desirability . . . of making the combination.”

It has not been shown that a POSITA, seeking to Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d

10 solve a problem of fastening a hose clamp, would 1044, 1051 (Fed. Cir.), cert. denied, 488 U.S. 825

reasonably be expected or motivated to look to (1988).

fasteners for garments. The combination of elements

from nonanalogous sources, in a manner that 70 I believe that it would better reflect the concept

reconstructs the applicant‟s invention only with the of obviousness to speak in terms of “from the prior

15 benefit of hindsight, is insufficient . . . . There must art” rather than simply “in the prior art.” The

be some reason, suggestion, or motivation found in word “from” expresses the idea of the statute that we

the prior art whereby a [POSITA] would make must look at the obviousness issue

the combination. {But see Nies’s concurrence at 75 - through the eyes of [a POSITA] and

JLC-4:36–110. – JLC} That knowledge can not - what one would be presumed to know with

20 come from the applicant‟s invention itself. that background. . . .



Oetiker‟s invention is simple. Simplicity is not In any event, variance in the language used in

inimical to patentability. See Goodyear Tire & 80 opinions does not change . . . the statutory inquiry.

Rubber Co. v. Ray-O-Vac Co., 321 U.S. 275, 279 Under § 103, subject matter is unpatentable if it

25 (1944); Panduit Corp. v. Dennison Mfg. Co., 81 F.2d “would have been obvious . . . to a person having

1561, 1572 (Fed. Cir.), cert. denied, 481 U.S. 1052 ordinary skill in the art.”

(1987). While there must be some teaching, reason,

85 suggestion, or motivation to combine existing

We conclude that the references on which the elements to produce the claimed device, it is not

30 Board relied were improperly combined. Accordingly, necessary that the cited references or prior art

the Board erred in holding the claims unpatentable specifically suggest making the combination. In re

under section 103. The rejection . . . is REVERSED. Nilssen, 851 F.2d 1401, 1403 (Fed. Cir. 1988). Such .

90 . . motivation to combine prior art teachings can

NIES, Chief Judge, concurring. derive solely from the existence of a teaching, which

35

I agree with the panel decision and write only to one of ordinary skill in the art would be presumed to

express my understanding of the language that there know, and the use of that teaching to solve the

must be some teaching, reason, suggestion, or same or similar problem which it addresses. In re

motivation found “in the prior art” or “in the prior 95 Wood, 599 F.2d 1032, 1037 (C.C.P.A. 1979). See

40 art references” to make a combination to render an

also EWP Corp. v. Reliance Universal, Inc., 755 F.2d

invention obvious 35 U.S.C. § 103. Similar language 898, 906-07 (Fed. Cir.), cert. denied, 474 U.S. 843

appears in a number of opinions {n1} (1985); In re Sernaker, 702 F.2d 989, 995 (Fed. Cir.

1983); Ex parte Clapp, 227 USPQ 972, 973 (B.P.A.I.

n1. {String cite of eight 1985-88 Federal Circuit cases,

100 1985)

including Board and litigation appeals, omitted. – JLC}

(“[E]ither the references must expressly or

45 and if taken literally would mean that an invention

implicitly suggest the claimed combination or

cannot be held to have been obvious unless

the examiner must present a convincing line of

something specific in a prior art reference would

reasoning [to prove] obvious[ness] in light of

lead an inventor to combine the teachings therein

105 the teachings of the references.”).

with another piece of prior art.

50

In sum, it is off the mark for litigants to argue,

This restrictive understanding of . . .

as many do, that an invention cannot be held to have

obviousness is clearly wrong. Other statements in

been obvious unless a suggestion to combine prior art

opinions express the idea more generally. We have

110 teachings is found in a specific reference.

stated, for example, that the test is:

55 “whether the teachings of the prior art, taken as PLAGER, Circuit Judge, concurring. . . .

a whole, would have made obvious the claimed

invention,”







JLC – 3

Advanced Patent Law Seminar THE FTC REPORT (2003) - 4

Policing Obvious Patents – Motivation to Combine versus Synergy

Jayson L. Cohen – October 25, 2005



INNOVATION POLICY AND THE Box 1. An Invalid Patent on an Obvious Invention

MOTIVATION TO COMBINE Can Harm Competition.



In 1895, George Selden obtained a U.S. patent with a

FEDERAL TRADE COMMISSION claim so broad that “it literally encompasse[d] most

TO PROMOTE INNOVATION: THE PROPER BALANCE automobiles ever made.” Yet the basic invention

5 OF COMPETITION AND PATENT LAW AND POLICY covered by that claim – putting a gasoline engine on a

(2003) chassis to make a car – was so obvious that many

http://www.ftc.gov/os/2003/10/innovationrpt.pdf people worldwide thought of it independently as soon

as the most primitive gasoline engines were developed.

{Footnote Citations to the 2002 FTC/DOJ Hearings The association that licensed the Selden patent

10 on Competition and Intellectual Property Law and collected hundreds of thousands of dollars in royalties

Policy, http://www.ftc.gov/opp/intellect/, state the – raising costs and reducing the output of automobiles

speaker’s last name, date of testimony, and page – before Henry Ford and others challenged the patent,

and the patent claim was judicially narrowed in 1911.

number (e.g., Wamsley 7/10 at 20). – JLC}

See MERGES & DUFFY, PATENT LAW AND POLICY:

15 EXECUTIVE SUMMARY CASES AND MATERIALS 644-46 (3d ed. 2002).

***

I. COMPETITION AND PATENT LAW AND

III. THE FTC/DOJ HEARINGS EXAMINED THE

POLICY PROMOTE INNOVATION AND

60 BALANCE OF COMPETITION AND PATENT

BENEFIT THE PUBLIC.

LAW AND POLICY.

20 ***

“The basic quid pro quo contemplated by the To examine the current balance of competition

Constitution and Congress for granting a patent and patent law and policy, the FTC and the DOJ held

monopoly is the benefit derived by the public 65 Hearings from February through November 2002.

from an invention with substantial utility.” The Hearings . . . involved more than 300 panelists,

25 [Brenner v. Manson, 383 U.S. 519, 534-35 including business representatives . . .; leading patent

(1966).] The public disclosure of scientific and and antitrust organizations . . . and practitioners; and

technical information is part of the consideration leading scholars in economics and antitrust and

that the inventor gives the public. 70 patent law. In addition, the FTC received about 100

written submissions. . . . This report discusses

30 II. COMPETITION AND PATENTS MUST WORK

Hearings testimony and independent research, and

TOGETHER IN THE PROPER BALANCE.

explains the Commission‟s conclusions about and

***

recommendations for the patent system.

[T]he Supreme Court has recognized the

75 ***

importance of competition to the patent system. {n9}

35 n9. See Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 CHAPTER 4. COMPETITION PERSPECTIVES

U.S. 141, 146 (1989) ON SUBSTANTIVE STANDARDS

(patent laws embody “a careful balance between the OF PATENTABILITY

need to promote innovation and the recognition that

imitation and refinement through imitation are both 80 STATUTORY STANDARDS OF

I.

40 necessary to invention itself and the very lifeblood of a

competitive economy.”). PATENTABILITY

“[F]ree competition” [is] “the baseline” [on ***

which] “the patent system‟s incentive to [create] Some describe the nonobviousness doctrine as

depends.” * * * [The patentability requirements “the heart of the patent law.” [Wamsley 7/10 at

45 for novelty and nonobviousness] “are grounded in 85 20.] It establishes a patentability step – a level of

the notion that concepts within the public grasp, development beyond the prior art – that must be

or those so obvious that they readily could be, accomplished before a patent can issue. . . .

are the tools of creation available to all.” “Nonobviousness asks whether a development is a

[Bonito Boats, 489 U.S. at 156.] significant enough technical advance to merit the

50 90 award of a patent”; it “can accurately be described

A failure to strike the appropriate balance as a „nontriviality‟ requirement.” {n13}

between competition and patent law and policy can n13. See MERGES & DUFFY, PATENT LAW AND

POLICY: CASES AND MATERIALS 644 (3d ed. 2002)

harm innovation. For example, if patent law were to [hereinafter, MERGES & DUFFY].

allow patents on “obvious” inventions, it could 95 The requirement that an invention be nonobvious

55 thwart competition that might have developed based preserves the public domain by creating a patent-

on the obvious technology. See Box 1. . . . free zone around the existing state of the art.







JLC – 4

Advanced Patent Law Seminar THE FTC REPORT (2003) - 5

Policing Obvious Patents – Motivation to Combine versus Synergy

Jayson L. Cohen – October 25, 2005



Properly applied, “nonobviousness” can ensure restrictive nonobviousness standard may result in

that the patent system avoids patents that unwarranted market power. [Examples:]

“hav[e no] social benefit[,] because . . . others 60 - A patent on a technically trivial development. . . .

would have developed the idea even without - When market power already is present, rather

5 the incentive of a patent.” trivial patents may help to maintain or extend it.

[MERGES & DUFFY at 646.]  [Patent portfolios] might add breadth to an

existing patent, creating a zone of exclusion.

“[N]onobviousness” also can provide undiluted 65  Market power may be extended beyond the

incentives . . . by prohibiting patents and avoiding life of the initial patent through . . . minor

10 royalties on obvious inventions, and can avoid . . . improvement patents [that may constrain

“. . . a proliferation of economically insignificant pricing absent competitive alternatives].

patents that are expensive to search and license.” An overly rigorous nonobviousness standard may . . .

[MERGES & DUFFY at 647.] 70 [withhold] patent protection, [delaying new] entrants

*** [and extending] an initial innovator‟s dominance.

15 II. THE INTERPRETATION AND

APPLICATION OF THE STANDARDS OF 2. Analytic Tools to Balance Patent and

PATENTABILITY Competition Concerns

*** 75

A. The Interpretation and Application of the In the context of nonobviousness, “but for”

20 Nonobviousness Requirement thinking may be useful to better align patent law

with competition policy. The concept is simple: to

1. Significance for Innovation and ask whether an invention likely would emerge in

Competition 80 roughly the same time frame – that is, without

significant delay – “but for” the prospect of a patent.

25 {I removed citations from this subsection, to Duffy Analogously, one can ask whether disclosure and

7/10 at 110-13, among others. Yet, except for Wesley commercial development . . . would have occurred as

M. Cohen, Patents: Their Effectiveness and Role, at soon “but for” the prospect of a patent. [In theory], if

http://www.ftc.gov/opp/intellect/cohen.pdf (Feb. 20, 85 even without the prospect of a patent, the invention

2002) (discussing market power), this subsection did would emerge . . . without significant delay, then the

30 not cite directly to any empirical data to support invention does not warrant a patent.

what are largely empirical assertions. – JLC}

This test has roots in patent law: when a patent

. . . The interpretation and application of this 90 elicits little social benefit[,] . . . patent law recognizes

doctrine can have a variety of effects on innovation that withholding the patent and avoiding any costs to

35 and competition. [First], the size of the required innovation and competition will maximize consumer

patentability step affects the innovation incentives welfare over time. {n35}

of both initial and follow-on innovators. n35. See Graham v. John Deere Co., 383 U.S. 1, 11 (1966)

- For the initial innovator, the size of the . . . step 95 (“The inherent problem was to develop some means of

affects [revenue sharing] with independent weeding out those inventions which would not be

disclosed or devised but for the inducement of a

40 improvers. If the required step is too small, . . . patent.”) . . .

an initial inventor must split royalties with

improvers that otherwise could not patent in the 100 The test also accords with long-established modes

“obvious” area around the initial patent. of antitrust analysis: . . . comparing the world with and

- For follow-on innovators, the size of the step . . . without a suspect transaction. [If] patent law confers

45 affects the choice between seeking ambitious or its right to exclude only if necessary to create,

niche improvements. disclose, or develop an invention, congruence

105 between patent and competition policy is more likely.

Second, a lax nonobviousness standard can

generate proliferation or clutter. . . . [M]inor patents [A]pplication of the “but for” principle

50 can significantly limit freedom of operation and generally will not work in individual cases. Some

require costly licensing negotiations. In some advances may be ripe due to underlying technological

settings, such as in semiconductors, these hurdles 110 or regulatory change and would flow without patent

may be inevitable to some degree, but in other protection. Other inventions may require substantial

contexts the choice of obviousness standard may fixed costs and would not be forthcoming without

55 affect whether proliferation evolves. [patent protection]. Distinguishing these situations

through case-by-case [but-for] inquiry would be

Third, either an overly lax or overly 115 costly, time-consuming, and prone to error.







JLC – 5

Advanced Patent Law Seminar THE FTC REPORT (2003) - 6

Policing Obvious Patents – Motivation to Combine versus Synergy

Jayson L. Cohen – October 25, 2005



Indeed, sorting out the need for any given patent should be carried out and would have a

might prove impossible when multiple inventions flow reasonable likelihood of success . . . .”

from a single research program. Moreover, if the cost [Brown and Williamson Tobacco Corp. v. Philip

of invention is much less than the subsequent cost of Morris, Inc., 229 F.3d 1120, 1124 (Fed. Cir. 2000).]

5 developing a commercial product, a “but for” test 65 ***

would have to consider whether the innovation would a. Nonobviousness and the

be commercially developed absent the patent. . . . “Suggestion Test”



[T]he Hearing record as a whole showed very Section 103 requires two basic inquiries to

10 substantial support for “but for” thinking as an 70 determine “nonobviousness.” First, what is the prior

idealized, foundational principle that can be a useful art for the claimed invention? . . . Comparing the

tool for shaping general policy analysis. . . . claimed invention to the prior art requires identifying

the major features of the claimed invention and

3. Nonobviousness: Interpretation and determining the extent to which those features

15 Application in the Courts 75 already exist in the prior art. Second, what

“would have been obvious at the time the

Participants generally perceived a trend [under] invention was made to a [POSITA] to which said

the Federal Circuit toward reducing the size of the subject matter pertains.” 35 U.S.C. § 103.

step required for patentability – that is, reducing

20 the rigor of the nonobviousness standard. {45} 80 Sometimes all of the elements of a claimed

n45. See, e.g., R. Levin 2/6 at 102-03 (nonobviousness

invention exist . . . in a combination of different prior

standard “diluted”); Kitch 2/20 at 68 (Federal Circuit has

“seemed to soften the non-obviousness test”); . . . ; see also art references. For example, in one case, the PTO

Gerald Sobel, The Court of Appeals for the Federal Circuit: rejected as obvious a patent application for a plastic

25 A Fifth Anniversary Look at its Impact on Patent Law and orange garbage bag decorated with a face and lines

Litigation, 37 AM. U. L. REV. 1087, 1089 (1988) (“a climate

85 that would look like a jack-o-lantern when filled with

more favorable to upholding . . . the non-obviousness of

patents has emerged”) . . . . Some of the panelists found the trash or leaves. There were four prior art references –

trend . . . pronounced in biotechnology contexts. See . . . Arti two about children‟s art projects to make jack-o-

30 Rai, Intellectual Property Rights in Biotechnology: lanterns, and two about conventional trash or lawn

Addressing New Technology, 34 WAKE FOREST L. REV. 827,

bags. When combined, these four prior art references

833 (1999) (“In considering DNA-based inventions, the

CAFC has. . . dramatically lowered] the bar for patentability 90 held all of the major elements of the claimed

and, therefore, significantly impoverishe[d] the public invention. That fact alone was insufficient to meet the

35 domain.”); cf. Dreyfuss 7/10 at 141-42 (“a lot of the Federal Circuit‟s suggestion test . . . . {n59}

watering down on nonobviousness has come in the chemical n59. In re Dembiczak, 175 F.3d 994 (Fed. Cir. 1999). . . .

field”). But see Polk 2/20 at 71-72 (nonobviousness standard Similarly, the PTO must identify a suggestion, teaching, or

has become “more uniform” but has not been lessened). 95 motivation for modifications to a piece of prior art before

Several participants voiced concern about too declaring such modifications obvious. See John F. Duffy,

40 great an issuance of obvious patents. Panelists Nonobviousness: The Economics and Legal Process of the

Doctrine (7/10/02) (slides) at 14, at

spoke of serious clutter problems and issues

http://www.ftc.gov/opp/intellect/ 020710johnfduffy.pdf.

involving market power maintenance and extension. 100

In discussing the Board‟s decision, which upheld

Participants viewed the Federal Circuit‟s the examiner‟s rejection, the Federal Circuit stated:

45 application of its “suggestion test” . . . as [an]

application[] . . . that can result in “obvious” patents. Nowhere does the Board particularly identify

As interpreted by the Supreme Court in Graham, [383 105 any suggestion, teaching, or motivation to

U.S. at 17,] nonobviousness requires . . . : combine the children‟s art references . . . with

[1] the scope and content of the prior art are the conventional trash or lawn bag references,

50 to be determined; nor does the Board make specific – or even

[2] differences between the prior art and the inferential – findings [identifying] the relevant

claims at issue are to be ascertained; and 110 art, the level of ordinary skill . . ., the nature of

[3] the level of ordinary skill in the pertinent the problem to be solved, or any other [facts] . . .

art resolved. to support a proper obviousness analysis.

55 Although the Court lists the key elements, it does [In re Dembiczak, 175 F.3d at 1000.]

not tell how to apply them. The Federal Circuit

has filled the gap in part through its “suggestion” 115 This is one in a line of recent cases in which the

test, which focuses on the extent to which Federal Circuit has rigorously imposed the suggestion

“the prior art would have suggested to one of test to overturn PTO findings of obviousness. {n61}

60 ordinary skill in the art that this process n61. See In re Sang-Su Lee, 277 F.3d 1338 (Fed. Cir. 2002);

In re Zurko, 258 F.3d 1379 (Fed. Cir. 2001); In re Kotzab,







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217 F.3d 1365 (Fed. Cir. 2000). Stephen Kunin cited In re 60 Stephen Kunin contrasted recent applications of

Keller, 642 F.2d 413, 425 (C.C.P.A. 1981), which stated that

the suggestion test with earlier interpretations that

“the test is what the combined teachings of the

references would have suggested to those of “would permit one . . . to look at the information

5 ordinary skill in the art,” [and concluded that] “with from the perspective of one of ordinary skill in

[recent] cases like Dembiczak and Kotzab it‟s like the the art” [and] “glean the information . . . with

approach based on the collective suggestion of the

references “never existed in the law.” . . .

65 some level of technical knowledge and skill.”

As another panelist, Kenneth Burchfiel, has written,

10 (i). Hearings Record “the court‟s frequent emphasis on „motivation‟

from the teachings of the prior art bypasses the

Panelists identified the Federal Circuit‟s knowledge of those of ordinary skill in the art,

application of the “suggestion test” as a core issue 70 and restricts the obviousness inquiry to a literal

in assessing nonobviousness and a focal point of reading of the disclosure of the prior art.” {n70}

15 current debate. As . . . Stephen Kunin phrased it, the n70. KENNETH J. BURCHFIEL, BIO-TECHNOLOGY AND

THE FEDERAL CIRCUIT 84 (1995). See generally . . .

Federal Circuit is insisting that the PTO find the

Cecil D. Quillen, Jr., The U.S. Patent System: Is It

“glue expressly leading you all the way” [and that 75 Broke? And Who Can Fix It If It Is, at 4, at

it] “connect the dots . . . very, very clearly . . . .” http://www.ftc.gov/os/comments/intelproperty

comments/quillenattachments/isitbrokewhocanfixit.pdf

20 Hearings participants generally agreed that the (criticizing the Federal Circuit‟s treatment of the

POSITA as “a literalist, without imagination or

Federal Circuit‟s suggestion test asks a helpful

80 creativity . . . who is incapable of considering

question . . . Nonetheless, they disagreed with the collectively the combined teaching of relevant

Federal Circuit‟s recent applications of the test, references unless „motivated‟ by explicit

which seem to require [according to former PTO directions in the references themselves”).

25 Director Dickinson] [F]ormer PTO Director Q. Todd Dickinson stated:

85

“specific and definitive [prior] art references

with clear motivation of how to combine those [T]he examiner could not even rely on the general

references.” knowledge that the examiner had in the field or

To illustrate . . ., Professor Duffy pointed to the even common sense for [a § 103] determination.

30 Selden patent on the automobile. Assuming that

90 Several panelists recommended that the test

Selden was the first to mount the newly developed be moderated. {n72}

gasoline engine on a carriage, no specific prior art n72. See, e.g., Duffy 7/10 at 120-21 . . . ; Wamsley 7/10 at

would have suggested the mounting, yet it . . . likely 154-55; . . .; cf. Gambrell 10/25 at 19 (insistence on express

was obvious: references leads to patents that should not be issued); Merges

35 95 2/28 at 631

(implicit in the Supreme Court‟s Graham v. John Deere

Everybody seemed to know that if you got a new

analysis is a “rejection of some of the more extreme

engine of any kind, you would put it on a Federal Circuit cases on the so-called suggestion test”).

carriage. That‟s the first thing that people did

with just about any kind of engine, put it on a 100 (ii). Analysis

40 carriage with some gears and see how it works.

Policy Issues. The Federal Circuit has repeatedly

Participants noted that Federal Circuit sought to protect inventors from findings of

articulations of the suggestion test are not uniformly obviousness based purely on hindsight.

rigid. The court sometimes has stated that the 105 “Good ideas may well appear „obvious‟ after

45 suggestion need not be express, but can be they have been disclosed, despite having been

“implicit from the prior art as a whole,” [or may previously unrecognized.”

come from] “the knowledge of [a POSITA]” [or [Arkie Lures, Inc. v. Gene Larew Tackle, Inc.,

from] “the nature of the problem to be solved.” 119 F.3d 953, 956 (1997).] As [Federal Circuit]

[Kotzab, 217 F.3d at 1370.] Nonetheless, . . . 110 Judge Newman . . . noted at the Hearings, many

50 Professor Duffy noted that references to patents are attacked on grounds of obviousness.

implicit suggestions and suggestions from the “It‟s fuzzy ground. It‟s hard to decide, difficult

nature of the problem to be solved may be to administer, even harder to set.”

“a point in the case law,” [but] “not perhaps Thus, Federal Circuit

the feel of the case law.” 115 “case law makes clear that the best defense

55 Criticisms of recent opinions focus on the against the subtle but powerful attraction of a

rigorous manner in which the Federal Circuit has hindsight-based obviousness analysis is rigorous

applied the suggestion test, rather than the application of the requirement for a showing of

totality of the court‟s language. the teaching or motivation to combine prior art







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references.” [Otherwise, . . .] “[c]ombining prior Invent[ion] typically involve[s] judgment,

art references without evidence of such a . . . experience, and common sense capable of

motivation simply takes the inventor‟s disclosure connecting some dots. The suggestion test, rigidly

as a blueprint for piecing together the prior art to 65 applied, assumes away a POSITA‟s typical levels of

5 defeat patentability – the essence of hindsight.” creativity and insight and supports findings of non-

[In re Dembiczak, 175 F.3d at 999.] In addition, obviousness even when only a modicum of additional

the Federal Circuit‟s application of the insight is needed. Indeed, too rigorous an application

suggestion test arguably has the virtue of of the “suggestion” test can operate as a one-way

certainty and predictability, {n77} 70 ratchet: it can help confirm obviousness, but it

10 n77. [P]anelist [Kieff] praised the Federal Circuit‟s does not necessarily identify nonobviousness.

interpretations as “relatively crisp and objective and

- “[S]pecific and definitive art references with

relatively easy to apply.” . . .

and it helps to ensure fulfillment of the PTO‟s clear motivation of how to combine those

“obligation to develop an evidentiary basis for references,” [Dickinson 2/6 at 66,] may confirm

15 its findings.” {n78} 75 the obviousness of an invention.

n78. See In re Sang-Su Lee, 277 F.3d at 1344. . . . - In contrast, the absence of such prior art

[T]he Federal Circuit has stressed the need for the references does not [evidence] whether a

PTO to ensure that each administrative record is POSITA could have combined prior art

amenable to review. See In re Sang-Su Lee, 277 F.3d

references to achieve the invention, given the

20 at 1342, 1344-45 . . . .

One can readily see the validity of the Federal 80 typical level of insight in that field.

Circuit‟s concerns. In sum, the suggestion test, as . . . applied in some

cases, seemingly understates levels of ordinary

Yet, . . . competing, and competitive, concerns skill, awards patents for inventions that inevitably

25 weigh on the other side of the ledger. A demand for would be forthcoming, and [may] confer[] market

specific and definitive motivating prior art references 85 power when competition need not be sacrificed.

effectively raises the bar for finding obviousness –

thus permitting more patents to issue – and does so In one very recent case, the Federal Circuit

in a way that raises competitive concerns to the appears to have moved away from rigid application

30 extent that it violates “but for” principles. . . .

of the suggestion test, stating:

90

Whether the goal is protecting against . . . hindsight As persons of scientific competence in the fields

or ensuring reviewable administrative records, a in which they work, examiners and

standard that requires suggestions or motivations administrative patent judges on the Board are

exceeding what inventors actually need, or that responsible for making findings, informed by

35 rigidly insists upon concrete documentation of facts

95 their scientific knowledge, as to the meaning

that by their very nature are not concretely of prior art references to POSITA and the

demonstrable, could impair competition. motivation those references would provide to

Interpretation of Section 103. Some of the such persons. Absent legal error or contrary

40 patents recently upheld as nonobvious under the factual evidence, those findings can establish a

suggestion test may be obvious under the statut[e]. As 100 prima facie case of obviousness.

noted in Professor Duffy‟s example of the Selden [In re Berg, 320 F.3d at 1315 (affirming . . .).]

automobile patent, an invention may be obvious even This more flexible articulation might . . . better

if the combination of elements . . . was not specifically enable application of the suggestion test in ways

45 . . . motivated in any prior art. . . . Some applications

105 sensitive to competitive concerns.

of the suggestion test, however, appear almost to have

read the POSITA out of the statute. {n82} Recommendation. The Commission urges that . . .

n82. See, e.g., In re Sang-Su Lee, 277 F. 3d at 1340-45 (in

the analysis should ascribe to the POSITA an ability

rejecting patent application as obvious, PTO . . . relied on

50 “the common knowledge and common sense of a POSITA” to combine or modify prior art references that is

and that the claimed invention came from same field as one 110 consistent with the creativity and problem-solving

prior art reference; the Federal Circuit vacated . . ., stating skills . . . of POSITAs. Requiring concrete . . .

“„[c]ommon knowledge and common sense,‟ even if

motivations beyond those actually needed by a

assumed to derive from the agency‟s expertise, do not

55 substitute for authority when the law requires POSITA, and failing to give weight to suggestions

authority.”). implicit from the prior art as a whole, suggestions

The Federal Circuit has . . . at times found implicit 115 from the nature of the problem to be solved, and the

suggestions sufficient . . . . See, e.g., SIBIA Neurosciences,

ability and knowledge of a POSITA, errs on the side

Inc. v. Cadus Pharm. Corp., 225 F.3d 1349, 1357 (Fed. Cir.

60 2000). But, as noted by Professor Duffy, that is not the “feel” of issuing patents on obvious inventions and is likely

of the case law. See Duffy 7/10 at 119. to be unnecessarily detrimental to competition.





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Jayson L. Cohen – October 25, 2005



CCPA to supply power thereto

MOTIVATION TO COMBINE WAS IN; - for generating the second

reactant and

SYNERGY WAS RECONCILED  so arranged that its output current varies in

60 response to the change in the potential

In re Shaffer difference, and

5 229 F.2d 476 (C.C.P.A. 1956) - means including a reactive circuit

 connected between the end point sensing

[Before O‟Connell, Johnson, Worley, Cole. – JLC]

means and the electrolytic means

{Judge Noble Jacob Johnson, a former U.S. 65  for more strongly attenuating

10 Representative from Indiana, succeeded Ambrose  high frequency components of the

O’Connell as Acting Chief Judge in 1956 and served amplifier input than

as Chief until taking inactive status in 1958.  low frequency components of the

O’Connell then acted as Chief Judge again until the amplifier input.

70

May 1959 appointment of Francis Eugene Worley.}

15 The references relied on by the Patent Officer

{Legal Background: Before the 1952 Patent Act, the are: Eberhardt et al., 2,297,543; Eckfeldt, 2,621.671.

C.C.P.A. used a variant of the motivation test to

The Eckfeldt patent relates to an electrolytic

monitor “invention.” See, e.g., In re Fridolph, 134

75 titrimeter having the basic elements of appellants‟

F.2d 414, 416 (C.C.P.A. 1943) (“In considering more

device. It differs from appellant‟s titrimeter in that it

20 than one reference, or a reference alleged not to be

employs an electro-mechanical system for changing

in the art involved, the question always is: does such

the amount of current generated by a pair of reagent

art suggest doing the thing which the appellant has

generating electrodes in response to a change in

done?”). After Congress passed § 103, the C.C.P.A.

80 potential at a pair of sensing electrodes. . . .

reaffirmed the motivation test. In re Shaffer is an

25 exemplary case involving an electrically controlled The Eberhardt patent relates to a direct voltage

titration mechanism for use in a flowing fluid.} amplifier. [A] part of the amplifier consists of a

reactive circuit which acts as a bypass for undesired

The Patent Office . . . rejected claims 29-33 {as

85 alternating voltage components of the direct voltage

obvious}, and applicant appealed.

30 which is to be amplified

[I. FACTS] ***

Claim 29 . . . is representative . . . : [II. MOTIVATION TO COMBINE]



29. In an automatic titrating mechanism for the 90 [T]o determine whether the combination of

35 quantitative determination of a first reactant in a references is proper, the following criterion is often

fluid, the combination which comprises used: namely, whether the prior art suggests doing

- a cell into which the fluid is introduced, what an applicant has done. . . . The art applied

- electrolytic means should be viewed by itself to see if it fairly disclosed

 for generating a second reactant 95 doing what an applicant has done.

40  for reaction to an end point in the cell

. . . There is no doubt that the Eberhardt

with the first reactant,

electronic amplifier possesses the structure recited in

- end point sensing means

the claim, and is capable of performing the function

 in operative association with the cell 100 of appellant‟s amplifier. However, there is no

 for producing a potential difference teaching in the Eckfeldt patent that a problem

45  which changes as the excess of one of exists in that rapid fluctuations of the signal voltage

the reactants in the cell changes from are not representative of end point values. While the

the end point, Eberhardt amplifier is inherently capable of

- an electronic power amplifier of high 105 minimizing the effect of undesirable fluctuating

transconductance signals, there is no teaching in the patent that the

50  having amplifier can be used with titrating apparatus [to

 its input minimize] the effect of undesired fluctuations of

o connected to the end point sensing signal voltage which occur in a titrating operation of

means and 110 the nature involved here. In short, there is no

 its output teaching in either of the patents which would

55 o connected to the electrolytic means suggest that they could be combined for the





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Policing Obvious Patents – Motivation to Combine versus Synergy Sakraida (Sup. Ct. 1976)

Jayson L. Cohen – October 25, 2005



purpose of producing a more accurate titration. 55 combination patents.”

In fact, a person having the references before him Anderson‟s-Black Rock v. Pavement Co., 396 U.S.

who was not cognizant of appellant‟s disclosure 57, 60 (1969).

would not be informed that the problem solved by

5 appellant ever existed. Therefore, can it be said that {Please see Exhibit 2 at JLC-16:25–50. – JLC}

these references which never recognized 60 ***

appellant‟s problem would have suggested its Helen W. Nies, Donald R. Dunner, and David N.

solution? We think not, and therefore feel that the Webster filed a[n amicus] brief for the Bar

references were improperly combined since there is Association of the District of Columbia. {This brief

10 no suggestion in either of the references that they urged affirming the Court of Appeals and argued that

can be combined to produce appellant‟s result. 65 a “synergy” test was inconsistent with Graham.}



[III. SYNERGY] [Procedural History:

{Contains facts not provided by the Court. –JLC}

15 [I]t has been stated that a new combination of old - December 14, 1965: Patent No. 3,223,070,

elements may be patentable; but not all new 70 “Dairy Establishment,” was issued to Gribble

combinations are patentable; and that if a new and Bennett, who assigned it to Ag Pro, Inc.

combination of old elements is to be patentable, the - Feb. 21, 1966: Court decides Graham v. John

elements must cooperate in such a manner as to Deere Co., 383 U.S. 1.

20 produce a new, unobvious, and unexpected result. . - October 8, 1968: Ag Pro sued Sakraida in the

. . And it should be remembered that in many cases 75 Western District of Texas for infringement.

the discovery of a problem is often an essential - Feb. 1, 1971: Fifth Circuit reversed SJ of

element in an invention correcting such a problem; obviousness because conflicting affidavits and

and though the problem, once realized, may be the absence of prior art documents on the record

25 solved by the use of old and known elements, this created unresolved issues of material fact about

does not necessarily negative invention. 80 the scope of the prior art. 437 F.2d 99.

- Feb. 5, 1973: Applying Graham, Fifth Circuit

In the present case, appellant has recognized a reversed judgment of obviousness and remanded

problem which is inherent in the titration of for infringement findings. 474 F.2d 167.

30 fluids[,] . . . that rapid fluctuations of signal - June 9, 1975: After the trial court granted a post-

voltage are not representative of true end point 85 judgment motion to admit new evidence and for

values. To overcome this problem, which was not a new trial, the Fifth Circuit reversed, denied the

recognized in the prior art, appellant has combined new trial, reaffirmed validity, and remanded

elements, all old in the art. However, since this again for infringement findings. 512 F.2d 141.

35 combination of elements evidences the discovery - Oct. 14, 1975: Supreme Court granted cert. on

and solution of a heretofore unknown problem to 90 the question of obviousness. 423 U.S. 891.]

produce a new, unobvious, and unexpected result, ***

namely improved titration, we feel that appellant We hold that the Court of Appeals erred in holding

has met the tests for patentability. the patent valid . . . . We therefore reverse and direct

the reinstatement of . . . judgment for petitioner . . . .

95

40 SYNERGY IS ALIVE AND WELL IN

Systems using flowing water to clean animal

THE COURT‟S PRECEDENTS wastes from barn floors have been familiar on dairy

farms since ancient times. {n1}

Sakraida v. Ag Pro, Inc. n1. . . . “Heracles now set out to perform his fifth Labour[,]

425 U.S. 273 (1976) (Brennan, J.) (unanimous) 100 to cleanse the stables of Augeas in a single day. Augeas was

a rich king of Elis, who had three thousand cattle. At night

the cattle always stood in a great court surrounded with walls,

45 SYLLABUS: close to the king‟s palace, and as it was quite ten years since

[Ag Pro‟s] patent covering a water flush system to the servants had cleaned it out, there was enough refuse . . .

remove cow manure from the floor of a dairy barn 105 to build up a high mountain. [Augeas promised Heracles

held invalid for obviousness, it being a combination one-tenth of his flock if he cleaned the stables.] The next

morning Heracles set to work, but even his strong arms

patent all the elements of which are old in the dairy would have failed to accomplish the task if they had not been

50 business and were well known before the filing of the aided by his mother-wit. He compelled a mighty torrent to

patent application. The system‟s exploitation of . . . 110 work for him . . . . First he opened great gates on two

gravity to effect the abrupt release of water opposite sides of the court, and then he went to the stream,

and when he had blocked up its regular course with great

“did not produce a „new or different stones, he conducted it to the court . . . , so that the water

function‟... within the test of validity of streamed in at one end and streamed out at the other, carrying







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away all the dirt with it. . . .” C. Witt, Classic Mythology in a flooded stream. . . . [O]n the surface of [the]

119-120 (1883). 65 pavement there are these piles of manure

The District Court found, and respondent concedes, droppings. This pavement is smooth and this

water moves down over this manure. . . .”

that none of the 13 elements of the Dairy

5 Establishment combination is new, {n2}

The District Court found that

n2. The District Court found . . . :

“1. [T]he „dairy establishment‟ as described in [Claims 70 “[n]either the tank which holds the water, nor the

1 and 3 of] . . . Patent 3,223,070 is composed of 13 means of releasing the water quickly is new, but

separate items, as follows: embrace[s] tanks and doors which have long

10 ***

been known,” [and further that] “their use in this

(1) A tank on a mounting, so that it can be tilted,

and the water poured out to cascade on the floor connection is one that is obvious . . . . The

to form a sheet. 75 patent does not meet the non-obvious

(m) A floor-washing means comprising a dam for requirements of the law.”

15 damming or collecting water as a pool directly on

the floor, which such dam abruptly openable to

The District Court therefore held that Dairy

send water cascading as a sheet over the floor

towards the drain. Establishment

2. [E]ach of the items above-described [was] not new, 80 “may be relevant to commercial success, but not

20 but had been used in the dairy business prior to the to invention,” [because the combination] “was

time the application for the said Gribble patent . . . had

reasonably obvious to [a POSITA].”

been filed . . . on November 5, 1963.”

and many of those elements, including storage of the Moreover, even if the combination filled a

water in tanks or pools, appear in at least six prior “long-felt want and... has enjoyed commercial

25 patented systems. {n3}

85 success, those matters, without invention, will

n3. The District Court found: not make patentability.”

“Many of the items [making] up Plaintiff‟s claim for a Finally, the District Court concluded:

patent were disclosed in prior patents[:] the McCornack “[T]o those skilled in the art, the use of the old

patent, the Holz patent, the Ingraham patent, the

elements in combination was not an invention by

30 Kreutzer patent, the Bogert patent, and the Luks patent;

and that . . . the Examiner‟s opinions refusing to issue a 90 the obvious-nonobvious standard. Even though

patent are true as to all items there stated to be covered the dairy barn in question [was] a successful

in prior patents or publications.” venture, more than that is needed for invention.”

The prior art involved spot delivery of water from The Court of Appeals disagreed with the District

35 tanks or pools to the barn floor by means of high Court‟s conclusion on . . . obviousness.

pressure hoses or pipes. That system required 95

supplemental hand labor, using tractor blades, It has long been clear that the Constitution

shovels, and brooms, and cleaning by these methods requires that there be some “invention” to be entitled

took several hours. The only claimed inventive to patent protection. Dann v. Johnston, 425 U.S. 219,

40 feature of the Dairy Establishment combination of [225] (1976). As we explained in Hotchkiss v.

old elements is the provision for abrupt release of 100 Greenwood, 11 How. 248, 267 (1851):

the water from the tanks or pools directly onto the “[U]nless more ingenuity and skill... were

barn floor, which causes the flow of a sheet of water required... than were possessed by an ordinary

that washes all animal waste into drains within mechanic acquainted with the business, there

45 minutes and requires no supplemental hand labor. As was an absence of that degree of skill and

an expert witness for respondent testified concerning 105 ingenuity which constitute essential elements of

the effect of Dairy Establishment‟s combination: every invention. In other words, the

“[W]ater at the bottom has more friction than improvement is the work of the skillful

this water on the top and it keeps moving ahead mechanic, not that of the inventor.”

50 and as this water keeps moving ahead we get a This standard was enacted in 1952 by Congress in 35

rolling action of this water which produced the 110 U.S.C. § 103

cleaning action. That is the key to this method “as a codification of judicial precedents . . . with

of cleaning. You do not get this in a hose [or a congressional directions that inquiries into the

gutter]. . . . [U]nless that water is continuously obviousness of the subject matter sought to be

55 directed toward the cleaning area the cleaning patented are a prerequisite to patentability.”

action almost ceases instantaneously....” {n4} 115 [Graham, 383 U.S. at 17.] . . .

n4. This witness further testified:

“[W]ater has energy and it can be used in many The ultimate test of patent validity is one of law,

different ways. In a hose the energy is used by

Great Atl. & Pac. Tea Co. v. Supermarket Corp., 340

60 impact, under pressure, . . . whereas the water that

comes down as a sheet or wall of water has built U.S. 147, 155 (1950), but resolution of the

in energy because of its elevation and as this 120 obviousness issue necessarily entails several basic

water is released it does the same thing water does







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factual inquiries, Graham, 383 U.S. at 17: The Court of Appeals recognized that the patent

“Under § 103, [1] the scope and content of the 60 combined old elements for applying water to a

prior art are to be determined; [2] differences conventional sloped floor . . . and that the purpose of

between the prior art and the claims at issue are the storage tank - to accumulate a large volume of

5 to be ascertained; and [3] the level of ordinary water capable of being released in a cascade or surge

skill in the pertinent art resolved.” - was equally conventional. 474 F.2d at 169. It

65 concluded, however, that the element lacking in the

The Court of Appeals concluded that prior art was any evidence of an arrangement of the

“the facts presented at trial clearly do not old elements to effect the abrupt release of a flow of

10 support [the District Court‟s] finding of water to wash animal wastes from the floor of a dairy

obviousness under the three-pronged Graham barn. 474 F.2d at 169. Therefore,

test. . . .” 70 “although the [respondent‟s] flush system does

474 F.2d at 172. We disagree and hold that the Court not embrace a complicated technical

of Appeals erroneously set aside the District Court‟s improvement, it does achieve a synergistic

15 findings. result through a novel combination.”

474 F.2d at 173.

The scope of the prior art was shown by prior 75

patents, prior art publications, affidavits of people We cannot agree that the combination of these

having knowledge of prior flush systems analogous old elements to produce an abrupt release of water

20 to respondent‟s, and the testimony of a dairy directly on the barn floor from storage tanks or pools

operator with 22 years of experience who described can properly be characterized as synergistic, that is,

flush systems he had seen on visits to dairy farms 80 “result[ing] in an effect greater than the sum of

throughout the country. Our independent the several effects taken separately.”

examination of that evidence persuades us of its Anderson‟s-Black Rock v. Pavement Co., 396 U.S.

25 sufficiency to support the District Court‟s finding 57, 61 (1969). Rather, this patent simply arranges old

“as a fact that each and all of the component elements with each performing the same function it

parts of this patent . . . were old and well-known 85 had been known to perform, although perhaps

throughout the dairy industry long prior to the producing a more striking result than in previous

date of the filing of the application for the combinations. Such combinations are not

30 Gribble patent. . . . What Mr. Gribble referred to patentable under standards appropriate for a

. . . as the essence of the patent, to-wit, the combination patent. Great A. & P. Tea, 340 U.S. at

manure flush system, was old, various means 90 152; Black Rock, 396 U.S. 57, 61. Under those

for flushing manure from dairy barns having authorities this assembly of old elements that delivers

been used long before the filing of the water directly rather than through pipes or hoses to

35 application. . . .” {n6} the barn floor falls under the head of

n6. The court [further] stated:

“the work of the skillful mechanic, not that of the

“. . . [T]he general idea [of the system was] a hard

surfaced sloping floor onto which the cows‟ offal 95 inventor.”

was dropped, and some system of introducing Hotchkiss, 11 How. at 267. Exploitation of . . .

40 water in sufficient quantities and force onto said gravity adds nothing to the sum of useful knowledge

floor to wash the offal therefrom . . . into a

where there is no change in the respective functions

manure container.”

Indeed, respondent admitted at trial of the elements of the combination; this particular use

“that the patent is made up of a combination of 100 of the assembly of old elements would be obvious to

45 old elements” [and] “that all elements are any person skilled in the art of mechanical

individually old. . . .” application. See Dann, 425 U.S. at 229-230.

Accordingly, the District Court properly followed our Though doubtless a matter of great convenience,

admonition in Great A. & P. Tea, 340 U.S. at 152: 105 producing a desired result in a cheaper and faster

“Courts should scrutinize combination patent way, and enjoying commercial success, Dairy

50 claims with a care proportioned to the Establishment

difficulty and improbability of finding “did not produce a „new or different function‟

invention in an assembly of old elements. . . . . . . within the test of validity of combination

A patent for a combination which only unites 110 patents.”

old elements with no change in their Black Rock, 396 U.S. at 60. These desirable benefits

55 respective functions . . . obviously withdraws “without invention will not make patentability.”

what already is known into the field of its Great A. & P. Tea, 340 U.S. at 153. See Dann, 425

monopoly and diminishes the resources U.S. at 230 n.4. Reversed.

available to skillful men. . . .”





JLC – 12

Advanced Patent Law Seminar Summary Case Chart – Synergy - 13

Policing Obvious Patents – Motivation to Combine versus Synergy Republic (7th Cir. 1979)

Jayson L. Cohen – October 25, 2005



FEDERAL CIRCUIT nonobviousness under § 103, reaffirmed the

MOTIVATION TO COMBINE IS IN; 45 continuing vitality of Graham.

***

SYNERGY IS OUT . . . Although the absence of [synergistic]

interaction may demonstrate the obviousness of

Cases Analyzing the Limited Role of Synergy in the combination, the presence of [synergy]

5 the Seventh and Federal Circuits 50 assuredly does not impart nonobviousness to a

device clearly suggested by the prior art. As thus

I. Summary Information Chart for the Following

defined, synergism is simply too broad to provide a

Cases on Synergy:

useful yardstick with which to measure patentability.

Case Yr. Won Appellate Sakraida

(Cir. Below / Finding? Cited?

55 [Convincing reasons support the rejection of

Court) Appeal

Republic 1979 AI / AI Harmless Yes synergy as the test for obviousness, including

(7th) Error (1) its inherently uncertain definition (i.e., the

Stratoflex 1983 AI / AI Harmless No sum is greater than the whole of its parts),

(Fed.) Error which is both under- and over-inclusive in

Medtronic 1983 AI / AI Harmless Yes 60 considering whether the invention would

(Fed.) Error have been obvious to the POSITA,

American 1984 AI / PO Reversible No (2) similarly, its overestimation of the skill in

Hoist Error of the art because] in certain circumstances the

(Fed.) Law very choice of the elements to be selected is

65 not obvious[, and

10 II. Republic Industries, Inc. v. Schlage Lock Co.,

(3) its susceptibility to hindsight given its focus

592 F.2d 963, 967-72 (7th Cir. 1979) (using

on the] performance of the elements After

capitalized Words for emphasis in the original).

combination[, not at the time of invention.]

[Before Swygert, Cummings, Pell. – JLC]

15

70 [T]he critical question becomes whether the level

{While these Judges were all esteemed in private of skill in the art was such that the combining of the

practice and public service, they were not patent elements in the manner claimed would have been

lawyers. See http://www.fjc.gov/servlet/tGetInfo? obvious, not in retrospect, but at the time it was done

jid=2328 (Swygert); http://en.wikipedia.org/wiki/ by the inventor. As the Supreme Court stated in

20 Walter_J._Cummings,_Jr.; http://www.isba.org/ 75 United States v. Adams, 383 U.S. 39, 50 (1966), a

Association/0010-16i.htm (Pell). The claims-in-suit companion case to Graham:

for a hydraulic door closer were held to be obvious

It begs the question . . . to state merely that

by the District Court and the Seventh Circuit, the

magnesium and cuprous chloride were

former using synergy and the latter using Graham.}

25

80 individually known battery components. If such

Section 103 received its definitive interpretation a combination is novel, the issue is whether

in Graham v. John Deere Co., 383 U.S. 1 (1966). bringing them together as taught by (the

*** inventor) was obvious in light of the prior art.

Neither Sakraida [v. Ag Pro, Inc., 425 U.S. 273

85 Synergism, however, precludes this analysis.

30 (1976)] nor [Anderson‟s-]Black Rock [v. Pavement

Because synergism centers exclusively on the

Co., 396 U.S. 57 (1969)] can be cited as prescribing

performance of the elements After combination and

some other, special test for the evaluation of combi-

without regard to the obviousness or nonobviousness

nation claims. Nowhere in these two decisions did the

of Making the combination, synergism does not

Court hold a synergistic effect to be a necessary

90 comport with the Graham mandate to apply § 103.

35 condition of patentability; nor did it hold that to [find]

synergism supersedes a finding of nonobviousness [T]his court [in prior cases] never intended that

under the Graham analysis. {In other words, synergy synergism be applied literally or that synergism is the

was neither necessary nor sufficient. But see JLC- Sine qua non of patentability. Rather, the concept

12:43–113. –JLC} To the contrary, each case quoted 95 was employed only as a figure of speech to express

40 Graham with approval. Each turned on . . . the three- the truism that when all the parts of a claimed

pronged test in Graham. In short, we believe that invention are known, the combination (and the act of

Sakraida and Black Rock, rather than establishing an combining) is likely to be more obvious to one

additional, different, or substituted test for reasonably skilled in the art. . . . However, because

100 synergism has prevented the development of a







JLC – 13

Advanced Patent Law Seminar Republic (7th Cir. 1979) - 14

Policing Obvious Patents – Motivation to Combine versus Synergy Stratoflex (Fed. Cir. 1983)

Jayson L. Cohen – October 25, 2005 Medtronic (Fed. Cir. 1983)



consistent, predictable body of law under § 103, and [District Court] Judge [Patricia J.] Boyle [of

because the concept does not bear any logical Ipso the Eastern District of Michigan] said

facto relationship to obviousness, the term has little, “synergism” [is] “a symbolic reminder of what

if any, utility. Therefore until Congress shall 60 constitutes nonobviousness when a combination

5 otherwise legislate or the Supreme Court shall patent is at issue,” [and that under] “either

otherwise specifically hold, this court will continue standard (Graham analysis or synergism) the

to apply the Graham analysis as the exclusive means combination . . . simply lacks the unique essence

by which to measure nonobviousness under § 103. of authentic contribution to the Teflon art which

65 is the heart of invention.”

10 III. Stratoflex, Inc. v. Aeroquip, Inc., 713 F.2d

1530, 1532, 1537, 1540 (Fed. Cir. 1983). “[S]ynergism” . . . is nowhere found in the

statute, 35 U.S.C. . . . The more objective findings

[Before Markey, Davis. Baldwin. – JLC] suggested in Graham are drawn from the language

70 of the statute and are fully adequate guides . . . .

15 [Patent No. 3,473,087] relates to a composite Judge Boyle treated synergism as an alternative

[polytetrafluoroethylene (“PTFE”)] tubing, formed of consideration. Hence the error . . . is harmless in view

an inner layer of electrically conductive PTFE having of Judge Boyle's . . . Graham [analysis].

particles such as carbon black uniformly distributed

in it and an outer layer of essentially pure non- 75 The reference to a “combination patent” is

20 conductive PTFE. equally without support in the statute. . . . Virtually

*** all patents are “combination patents”, if by that

. . . The particles in the inner layer . . . dissipate label one intends to describe patents having claims

electrostatic charges built up on the inner surface of to inventions formed of a combination of elements.

the tubing, conducting them . . . to grounded metal 80 It is difficult to visualize, at least in the mechanical-

25 fittings . . ., to prevent arcing . . . through the tubing structural arts, a “non-combination” invention, i.e., an

wall to the surrounding metal braid. Arcing causes invention consisting of a single element. . . . Judge

„pin holes‟ through which fuel can leak. Boyle's . . . reference to the '087 patent as a

*** combination patent was harmless in view of her

The question . . . is whether the inventions set 85 application of Graham guidelines.

30 forth in claims 1, 3, 4, 6 and 7, each as a whole,

would have been obvious to one of ordinary skill in {The Federal Circuit rejected the synergy test here

the art when they were made, in view of the without citing any of the relevant Court precedents.}

teachings of the prior art as a whole.

90 IV. Medtronic, Inc. v. Cardiac Pacemakers, Inc.,

35 {The Federal Circuit does not invoke the motivation 721 F.2d 1563, 1566 (Fed. Cir. 1983).

test as clearly here as it normally does today. Yet, by

using the test, “in view of the teachings of prior art [Before Markey, Bennett, Cowen. – JLC]

as a whole,” the motivation to combine was a crucial

issue in this case. See JLC-4:55–58, 64–66. – JLC} 95 {Three Medtronic pacemaker patents were each held

40 to be invalid after the Federal Circuit found

Though findings on the "differences" from the motivations to combine in the prior art references of

prior art are suggested by Graham, the question under record. Thus, the District Court had committed

35 USC § 103 is not whether the differences harmless error when it had found that each of these

themselves would have been obvious. Consideration 100 patents was invalid due to lack of synergy.}

45 of differences, like each of the findings set forth in

Graham, is but an aid in reaching the ultimate Medtronic vigorously argues error in the

determination of whether the claimed invention as a [District Court‟s] Memorandum statement that

whole would have been obvious. “courts should scrutinize combination patent

*** 105 claims with a care proportioned to the

50 [T]he [prior art] Abbey-Upham report describes difficulty and improbability of finding

uneven spacing between carbon black particles as a invention in an assembly of old elements.”

possible cause of intermittent conductivity. . . . [T]he We cannot construe that statement, taken from the

report may be viewed as pointing in the direction of opinion in Sakraida v. Ag Pro, Inc., 425 U.S. 273,

110 281 (1976) and Great Atlantic & Pacific Tea Co. v.

uniform dispersion of such particles, as set forth in

55 claim 7, to produce less intermittent conductivity.

Supermarket Equipment Corp., 340 U.S. 147, 152

(1950) as a rule of law applicable broadly to









JLC – 14

Advanced Patent Law Seminar Medtronic (Fed. Cir. 1983) - 15

Policing Obvious Patents – Motivation to Combine versus Synergy American Hoist (Fed. Cir. 1984)

Jayson L. Cohen – October 25, 2005



patent cases because virtually every claimed “merely [withdraw] from the public‟s use

invention is a combination of old elements. . . . that which was known before”

60 -- is wholly erroneous.

{This is selective quoting. See Sakraida, JLC-12: While the existence of a new and unexpected

5 43–58, 76–113, for the entire quote and its context.} result or function or a so-called “synergistic” effect

may support a holding of nonobviousness, e.g.,

Further, the Court has itself recognized the Clark Equip. Co. v. Keller, 570 F.2d 778, 789 (8th

patentability of combinations of old elements. 65 Cir. 1978)

United States v. Adams, 383 U.S. 39, 51-52 (1966) (“in the patent law context, „synergism‟ has no

10 (“Despite the fact that each of the elements of the talismanic power; „synergism‟ is merely one

Adams battery was well known in the prior art, indication of nonobviousness”),

to combine them as did Adams required that a our predecessor courts have considered and rejected

POSITA must ignore” long-accepted factors.). 70 the notion that a new result or function or

synergism is a requirement of patentability. It was

15 {This Adams quote may also support an alternative emphasized that

proposition that is more consistent with Supreme “under this standard one would focus solely on

Court decisions: namely, old elements may create a the product created rather than on the

synergy if they function differently than in the prior 75 obviousness or nonobviousness of its creation, as

art. See JLC-12:53–58, 83–102. Similarly, required under § 103.”

20 “ignoring long-accepted factors” sounds a lot like:

Gen. Motors Corp. v. U.S. Int‟l Trade Comm‟n, 687

the prior art “teaches away” from making the F.2d 476, 482-83 (C.C.P.A. 1982). See In re

claimed combination – JLC} Sponnoble, 405 F.2d 578, 585 (C.C.P.A. 1969)

There is neither a statutory distinction between 80 (“A patentable invention may result even if the

25 "combination patents" and some other, never defined

inventor has, in effect, merely combined

type of patent, nor a reason to treat the conditions for features, old in the art, for their known purpose,

patentability differently with respect to "combination without producing anything beyond the results

patents". It but obfuscates the law to posit a non- inherent in their use.”);

statutory, judge-created classification labeled "combi- 85 Bowser, Inc. v. United States, 388 F.2d 346, 349-350

30 nation patents". Richdel, Inc. v. Sunspool Corp., 714

(Ct. Cl. 1967). We agree with the Seventh Circuit‟s

F.2d 1573 (Fed. Cir. 1983). That . . . misstatement did analysis of the “fundamental flaws” in the theory

not in this case lead to an erroneous application of the that synergism is essential to patentability.

law . . . . Though the record would have been more Republic Indus., 592 F.2d 963, 967-72 (7th Cir.

clear without [referring] to "combination patents", . . . 90 1979) {JLC-13}. See Stratoflex {JLC-14}.

35 it cannot be said that the appealed judgment was . . .

so influenced thereby as to require reversal.



V. American Hoist & Derrick Co. v. Sowa &

Sons, 725 F.2d 1350, 1354, 1360-61 (Fed. Cir.),

40 cert. denied, 469 U.S. 821 (1984).



[Before Rich, Cowen, Kashiwa. – JLC]



{The AI challenged Patent No. 4,079,584, which

45 claims a shackle for use under large loads, such as

anchor lines. The Federal Circuit reversed an

obviousness decision that relied on synergy alone as

the determinative test and remanded for a new trial

to resolve factual issues that would allow an appeals

50 court to review an obviousness decision.}



Instructing a jury that the presence of such a

“new and unexpected function in

combination”

55 is a requirement of patentability -- and reasoning

that were the law otherwise a claimed

combination of old elements would

American Hoist Shackle – Patent No. 4,079,584





JLC – 15

Advanced Patent Law Seminar Exhibits - 16

Policing Obvious Patents – Motivation to Combine versus Synergy

Jayson L. Cohen – October 25, 2005



Exhibits

Exhibit 1 - In re Oetiker {JLC-2–3}. Patent No. 5,274,886, “Clamp structure with preassembly arrangement,” to

Oetiker issued on January 4, 1994. Figure 2 most clearly shows the preassembly hook 40 at issue in the case.

5









10









15









20









25 Exhibit 2 – Sakraida v. Ag Pro {JLC-10–12}. Patent No. 3,223,070, “Dairy Establishment,” to Gribble and

Bennett issued on December 14, 1965. The “features” at issue in the case relate to embodiment elements in Fig. 1.

- The dam wall 94 for collecting water in the milking area 98 is lowered abruptly so that a large volume of water

swept along floor 15, sloped at a 3% grade, washes the milking area 98. Water flows toward the drain grate 20.

- The tanks 30 allow the abrupt release of water into the resting areas 14 and feeding areas 16 (near feeding

30 troughs 19) to clean the alley floor 26.

In case you are wondering, Figs. 2 and 3 are indeed side and top views, respectively, of cows in the resting area

along line 2-2 (upper middle) in Fig. 1.





35









40









45









50









JLC – 16