Phosiwhat?

In deciding validity of patents through the obviousness test, the term PHOSITA keeps popping up. It means "person having ordinary skill in the art" and is actually a legal fiction (assumed fact). He does not have to always exist in a case, but is taken as a guideline of skill level to determine non-obviousness. Otherwise, we would know when to determine if something is non-obvious.

It was mentioned in Patently-O that we may think that the education level of the inventor is relevant to determining the PHOSITA skill level, but it should actually be excluded. The PHOSITA is simply a skilled worker (with common sense, of course, and not a robot), and should not be considered someone capable of making the invention (someone really smart). However in the KSR case, the PHOSITA figure was further expanded to be creative when looking at prior art, at least able to think slightly out of the box. That is to say, for example, a bottle invented to store water can be used to store other things, such as flowers, but not have led to being used as the body of a water-propelled rocket launcher (a bit far-fetched I know, but I could not think of anything else).

Certainly, this definition of a PHOSITA is ambiguous depending on the case, but I believe it should be kept that way. Every case can be very different and setting a stricter definition could render it biased to or against some group of cases. Even in the legal world where the law is constantly updated based on new judgement, some things are best left untouched, lest there be no case to fight anymore.

Sources:

http://patentlyo.com/patent/2007/09/invention-obvio.html

http://www.hjklaw.com/blogs/archive/entry/who_is_a_person_of_ordinary_skill

http://www.epo.org/law-practice/legal-texts/html/guidelines/e/g_vii_3.htm

The Graham Factors

The USPTO's examination guidelines for determining obviousness is listed under 35 USC § 103 (Title 35 of the United States Code Section 103). Apart from the KSR case mentioned in this week's class, it also lists guidelines derived from other cases (only briefly mentioned in class), but they mainly improve the Graham factors.

The Graham factors are some basic questions of fact which should first be determined - the scope and content of prior art, differences between claimed invention and prior art, and the level of ordinary skill in the prior art. These are the main factors used for every obviousness decision by the Supreme Court since the Graham case in 1966. Of course, here we see that it is obvious the factors are important. However, as I mentioned in my earlier post, it is only obvious because we already know it. What was not obvious then though was what was brought up in the KSR case, which again is obvious to us now. Interesting!

Anyway, the section describes in detail what is required in each factor. I will discuss about the "differences between claimed invention and prior art" in this post, that is the claimed invention must be considered as a whole. This stemmed from a case that an invention was argued to be only a structural difference from a prior art, although if considered as a whole it eliminated a problem from the prior art. Another case involved a claim for a three-step process, of which the first two steps were non-obvious while the third was obvious. If we did not consider the claim as a whole, the third step would become invalid then, but it was actually a necessary step in the invented process.

Also, if we distilled the invention down to the "gist" or "thrust" of the invention, it disregards the "as a whole" requirement. What does this mean? Basically, if we focused on the main point, or any point for that matter, of the invention, we are not taking the invention as a whole. I would say that this rule mainly serves as a reminder to judges not to focus on any specific point. In fact, it is a crime we always commit unknowingly.

Sources:
http://www.uspto.gov/web/offices/pac/mpep/s2141.html
http://www.patenthawk.com/blog/2005/03/handling_103_rejections.html
http://www.the-business-of-patents.com/obviousness.html

Obviousness is Difficult

In this week's class, we discussed about non-obviousness, one of the three elements required for a patent to be valid. As I was reading the article by Dennis Crouch on Patently-O, many of the tests for obviousness in the case was mentioned in class and certainly highlights the difficulty in proving non-obviousness.

In summary, the patent by Leo Pharmaceutical claiming a "storage stable and non-aqueous" pharmaceutical composition was challenged by Galderma R&D and initially invalidated, before the Federal Circuit reversed the decision after an appeal. The reason for the invalidation and reversal primarily stems about the obviousness point of the patent, which I will discuss in this post.

First, we need to know a bit more about the composition is that it combines Vitamin-D and corticosteroids by adding the claimed solvent, which then allows it to be storage stable, which means it can be stored for a period of time without degrading. The Board had found this to be obvious as it combined three prior art references. It was known in the references that it would be great to be able to combine Vitamin-D and corticosteroids, but they either discouraged the combination or combined them without making them storage stable. Thus, the Federal Circuit stated that it was actually not obvious since past research pushes them away from the invention.

The Federal Circuit also substantiated with the point that the invention only came after a decade of previous patents, which means it was a different problem to solve or it would have been solved much earlier. As such, the Chief Judge handling the appeal, Judge Rader, felt that older prior art should be seen as less credible. I certainly agree to this point. Had the earlier researchers first known of the problem or not steered clear of it, they would have been able to solve it since they were already researching about it.

Also, while the patent claimed a wide variety of solvents, there were many more potential solvents and it would not have been obvious that the claimed solvents would work without first trying many others which would not. This made a lot of sense in why the obviousness test is such a difficult test to ascertain, such that even the Board would make a mistake. In fact, I would say it in itself is one of the biggest problems! Most inventions and solutions we see are obvious on first sight, simply because they solve the problem. For example, when we tutor someone, we may know how to solve the problem just because we already know how. However, sometimes, we cannot even comprehend why the tutee does not get it. It is very difficult to put ourselves in their shoes unless we can time-travel to when we did not know the solution. That is certainly an interesting side topic to think about.

Sources:
http://patentlyo.com/patent/2013/08/judge-raders-obviousness-tutorial-including-the-conclusion-that-older-prior-art-is-less-credible-and-a-restatement-that-o.html
http://www.cafc.uscourts.gov/images/stories/opinions-orders/12-1520.Opinion.8-8-2013.1.pdf

A Further Blow to Apple

Apple suffered yet another setback today in their war with Samsung, their renewed motion for a permanent injunction in US against some of Samsungs' older smartphones, which was granted after an appeal following the denied injunction in December 2012, was again denied. The denial was upheld mainly because the judge feels "Samsung's competition is, for the most part, lawful, and Apple cannot obtain an injunction only because it is harmed by lawful forms of competition."

Although those smartphones in discussion are not sold in the US market anymore, Apple had argued that the injunction would have been important in preventing Samsung from releasing similar models in future. Nevertheless, Apple and Samsung are still able to appeal any unfavourable parts of the judgement.

On a side note, the case which this renewed motion derived from the first case filed between Apple and Samsung which started roughly 3 years ago. I feel this has been a long drawn fight and should conclude soon, although Samsung has said they will be appealing for the damages they have to pay in the previous ruling in 2012. Apart from monetary damages, the mentioned patents have been brought up countless times, and it will be unlikely that Samsung will be copying them again despite what Apple thinks.

Sources:
http://www.fosspatents.com/2014/03/setback-for-apple-us-judge-denies.html
http://www.reuters.com/article/2014/03/06/us-apple-samsung-injunction-idUSBREA251JM20140306

Public Disclosures, Forced or Self-Initiated?

Progress on one of the many cases between Samsung and Apple managed to surprise Florian Mueller of Foss Patents, which is a rarity, seeing how he responded in his post. In the case, Apple and Nokia argued that Samsung had made use of "highly confidential patent license terms" between Apple and Nokia for their own license negotiation with Nokia (in July 2013). Samsung was cleared of the charge on the end of January, but their law firm Quinn Emanuel was ordered to pay for the cost of litigation for Apple and Nokia as it led to the disclosure of those confidential licensing terms.

However, it was found that Apple themselves had publicly filed the supposedly license terms with Nokia on a publicly-accessible court docket (summary of proceedings on court) since October, before taking it down four months later. What makes this a big deal is that Apple did not have to release exact details of the license terms publicly.

Personally, similar to what Mueller proposes, I think there should be a reduction in the cost Quinn Emanuel would need to pay. Although we can argue that these confidential information would not have been released had Samsung not presented licensing terms to Nokia which were almost identical to Apple's, the revelation was only to those present at court and would not have been publicly available, which Apple chose to disclose whether by carelessness or not. Samsung and their law firm should thus not be required to cover for all the cost of litigation since Apple made a mistake even if the public did not see the confidential licensing terms while it was still available to the public.

Sources:
http://www.fosspatents.com/2014/03/apple-publicly-disclosed-terms-of-its.html
http://www.fosspatents.com/2014/01/us-court-declines-to-sanction-samsung.html
http://www.scribd.com/doc/203331606/14-01-29-Apple-v-Samsung-Order-on-Sanctions-for-Disclosures

Man and Nature

As mentioned in class this week, everything that is made by man can be patented. However, a product that is similar to what exists in nature cannot (i.e. an exact duplicate of nature). The process that allows you to get more harvest than naturally possible, on the other hand, can be patented. There are many other examples which are difficult to classify into one of the two categories though. Thus, how do we know which claims relating to nature can or cannot be patented?

Just today, USPTO released a memorandum to the Patent Examining Corps listing some guidelines for analysing claims involving "laws of nature/natural principles, natural phenomena, and/or natural products". Dennis Crouch on Patently-O points out that this is important, as there is currently a separation between the examiners, the judges, and the jury, who have technical training, legal training, and neither respectively. The guidelines were listed in lieu of the changes in law from a tried case, and closes the gap between the examiners and judges, as examiners might not be previously informed.

Following this memorandum, it is likely more are to come given the accelerating number of patent lawsuits and, in particular, many regarding validity of patents. While this may further complicate the role of the examiners as they have more different sets of guidelines for different categories of patent applications to follow, it may also aid in rejecting more "bad" patents.

Sources:
http://patentlyo.com/patent/2014/03/eligibility-guidelines-phenomena.html
http://www.uspto.gov/patents/law/exam/myriad-mayo_guidance.pdf
http://www.uspto.gov/patents/law/exam/myriad-mayo_qrs.pdf