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Source of this Wikipedia article is: 42 Ariz. L. Rev. 581, *
Arizona Law Review
Summer, 2000
42 Ariz. L. Rev. 581
LENGTH: 16312 words
NOTE: Evolution of the Concept of Non-Obviousness of the Novel Invention: From a Flash of Genius to the Trilogy
SUMMARY:
... " Patent protection for inventors has thus been the cornerstone in encouraging the application of science and technology toward useful ends. ... A complementary area of patent litigation, the doctrine of equivalents, is examined alongside non-obviousness to address the question of how different an invention must be from the prior art before patent protection will be granted and sustained. ... In the United States, the inventor who is first to invent is rewarded with patent protection, when conception of the invention is coupled with due diligence in reducing that invention to practice. ... The flash of genius test was eventually rejected by the 1952 statute's $ S 103 standard of non-obviousness: "Patentability shall not be negatived by the manner in which the invention was made. ... When a combination patent is involved, what happens to the Trilogy's non-obviousness standard? Is this "invention" test to be used along with the Trilogy's secondary considerations when dealing with combination patents? ... As the Federal Circuit established in ACS Hospital Systems, Inc. v. Montefiore Hospital, "Obviousness cannot be established by combining the teachings of the prior art to produce the claimed invention, absent some teaching or suggestion supporting the combination. ...
TEXT:
[*581]
I. Introduction
The Constitution gives Congress express authority "To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries." 1 Patent protection for inventors has thus been the cornerstone in encouraging the application of science and technology toward useful ends. 2 This constitutional provision has resulted in patents being issued in this country since 1790 and has evolved into the current Patent Statute of 1952, found in Title 35 of the United States Code. 3 Because patent law is governed exclusively by federal statute, there is no state patent law to consider. 4
The legal existence of a patent spans periods of both prosecution (writing, filing, and obtaining patents) and litigation, in which the validity and viability of patents are tested. 5 Since patent rights are constitutionally provided, patent claims are litigated in district courts, the Court of Appeals for the Federal Circuit (and its [*582] predecessor, the Court of Customs and Patent Appeals), and the Supreme Court. 6 In addition, when a question of priority of invention (i.e. who invented first) arises during patent prosecution, a determination of priority is made by the Board of Patent Appeals and Interferences of the U.S. Patent and Trademark Office, and these decisions are reviewable by the federal courts. 7
This Note examines one aspect of patentability of an invention, namely that of "non-obviousness" as described in 35 U.S.C. $ S 103, and examines how the various interpretations of $ S 103 by the circuit courts (prior to 1982) and the Federal Circuit (after 1982) have evolved over time. Section 103 requires that the invention be "non-obvious" to a mythical person "having ordinary skill in the art" 8 and the implications of this ordinary skill requirement will briefly be considered. A complementary area of patent litigation, the doctrine of equivalents, is examined alongside non-obviousness to address the question of how different an invention must be from the prior art before patent protection will be granted and sustained. This Note then explores the intersection of the interrelated protections of statutory non-obviousness and the judicial construction of "equivalents." Following a brief overview of patents and patentability, this Note outlines the maturing case law in the area of non-obviousness, and concludes with current views of non-obviousness (and to some extent, equivalents) in the Federal Circuit and the Supreme Court.
II. Overview of Patents and Patentability
The federal government grants an inventor exclusive property rights in her invention in exchange for full disclosure of the invention to the public. 9 By this agreement, the inventor obtains the right to prevent others from making, using, or selling that invention for a limited period of time. 10 Government, and society generally, benefit from technological advancements that derive from the ability to study and learn from the innovations incorporated into the new invention. Patents are therefore extremely practical legal instruments by which an inventor, a venture capitalist, a corporation, or others may protect their investments of time and money necessary to produce a contribution to the "useful arts." 11 Because of the requirement that an invention be "useful" for patentability, society as a whole reaps the benefit of this form of property protection because the invention is [*583] created under a system that compensates that inventor only if society can derive a benefit from the invention. 12
A. Types of Patents
There are three primary types of patents described in the Patent Act: utility, design, and plant. 13 A utility patent concerns the functional and useful aspects of technological innovations, such as the machines, processes, electrical circuits, chemical compounds and new methods of making and manufacturing these innovations. 14 (For the purposes of this Note, the term "patent" shall refer to the utility patent.) In contrast, the design patent protects the ornamental aspects of a useful article and not its functional aspects. 15 A plant patent is awarded for the discovery and asexual reproduction of a new variety of plant. 16
The description of an invention in the patent document itself need not be in any particular format, but it must include a detailed description of the invention (the "specification"), a description of the drawings (if any), and one or more claims. 17 The patent claims are of singular importance, since they define the subject matter that is given patent protection and delineate the scope of the inventor's intellectual property. 18 As a result, the patent claims are subject to particular scrutiny in determining the non-obviousness of the invention.
B. Requirements for Patentability
The Patent Act prescribes several requirements for obtaining patent protection, including: subject matter, 19 novelty, 20 utility, 21 non-obviousness, 22 enablement, 23 and best mode. 24 [*584]
1. Subject Matter
Section 101 of the Patent Act defines patentable subject matter as "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof...." 25 The "new" (novelty) and "useful" (utility) requirements of $ S 101 are examined below. Examples of subject matter that are not patentable include laws of nature, physical phenomena, and abstract ideas. 26 However, using the statutory definition, the courts have found microorganisms produced from genetic engineering, 27 mathematical algorithms applied to statutory subject matter, 28 business methods incorporating algorithms that produce a useful and tangible result, 29 and genetically-altered animals 30 to be patentable subjects.
2. Novelty
Patentable subject matter must also be novel or new to receive patent protection as defined in $ S 102 of the patent statute. Rather than defining what is "novel," $ S 102 describes events or situations that dictate when patentability is precluded, thus defining when an invention is not new. 31 Such events include situations such as publication of the invention at some time before the patent application was filed, 32 or prior patenting or "anticipation" of the subject matter of the invention. 33
3. Utility
Inventions that have no use or utility are not patentable. 34 Utility cannot be presumed; it must be clearly disclosed as an essential part of the patent specification. 35 Thus, a new process that results in a product of no utility is itself not utilitarian. 36 For example, a new method or process of synthesizing a previously unknown chemical compound is not patentable unless the chemical itself is shown to have its own utility; its similarity to other, useful compounds is an insufficient basis for the utility requirement. [*585]
4. Non-Obviousness
In addition to novelty and utility, $ S 103 of the patent statute prevents patenting an invention that is merely an obvious variation of known technology. 37 The obviousness of an invention is evaluated relative to "a person having ordinary skill in the art to which said subject matter pertains." 38 How the courts' (especially the Federal Circuit's) interpretations of non-obviousness have evolved over time are examined below.
5. Enablement and Best Mode
The detailed description or specification of a patent must be sufficiently clear and complete as to enable a person of ordinary skill in the art to make and use the invention. 39 A separate requirement of $ S 112 of the Patent Act dictates that the specification disclose the "best mode contemplated by the inventor of carrying out his invention." 40 Thus, enablement and best mode are technically two separate requirements. Note that the patent application must disclose only the best mode contemplated by the inventor at the time of the application, not a better mode contemplated by another person skilled in the art. 41
III. The Novelty Requirement for Patentability
A. Overview of 35 U.S.C. $ S 102
A highly litigated portion of the patent statute is the $ S 102 requirement that the invention for which patent protection is sought be "novel," despite the rather objective statutory criteria for novelty. 42 Novelty is defined with respect to prior art, as reflected in the following statutory language: "A person shall be entitled to a patent unless...." 43 Thus, novelty is an initial, threshold determination that must be performed before any inquiry into non-obviousness is made. The $ S 102 definitions of prior art depend upon comparing that purported prior art to the date of invention, 44 the filing date, 45 or other characteristics of the claimed [*586] invention, such as abandonment 46 or where the applicant "did not himself invent the subject matter sought to be patented." 47
B. Bars to Patentability Relating to Date of Invention
In the United States, the inventor who is first to invent is rewarded with patent protection, 48 when conception of the invention is coupled with due diligence in reducing that invention to practice. 49 Thus, inventive acts include the conception of the idea, diligence in reducing the idea to practice, and actual reduction of the invention to practice. 50 The date of invention may be shown to be as early as the date of conception. 51 The importance of an inventive act's timeline is demonstrated by $ S 102's definition of prior art according to the date of invention that prevents patenting the claimed invention. For example, if there is public knowledge of the invention in the United States, the invention has been used by others in the United States, or if the invention has already been patented or described in a printed publication anywhere in the world, at any time before the applicant's date of invention, then the claimed invention is not patentable. 52 Similarly, if the prior art is described in a U.S. patent having an effective U.S. filing date before the applicant's date of invention, section 102(e) bars patenting the claimed invention. 53
C. Bars to Patentability Relating to Filing Date
Section 102 also defines prior art by comparing that art to the applicant's filing date for the claimed invention. 54 For example, if there is public use of the invention in the United States, the invention has been on sale in the United States, or if the invention has been patented or described in a printed publication anywhere in the world more than one year before the applicant's U.S. filing date, then the claimed invention is not patentable. 55 Once the elements of novelty as defined under $ S 102 are met, the invention must still meet the criteria of nonobviousness as outlined below. 56 [*587]
IV. The Non-Obviousness Requirement for Patentability
A. Overview of 35 U.S.C. $ S 103
While novelty over prior art is somewhat readily determinable under $ S 102, the subjective notion of non-obvious subject matter led to a virtual nightmare in litigating the validity of patents and inconsistent decisions among the federal circuits. 57 The first sentence of 35 U.S.C. $ S 103 provides an introduction to non-obviousness as follows:
A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. 58
Even though an invention is "not identically disclosed or described as set forth in $ S 102," i.e. "novel" under $ S 102, novelty is only a threshold obstacle that must be surmounted before the non-obviousness inquiry is initiated. 59 Section 103 later emphasizes that "patentability shall not be negatived by the manner in which the invention was made," 60 thereby directly responding to judicially applied standards beyond those required by the statute. 61
B. Relationship of Non-Obviousness to Novelty
It is clear under $ S 103 that non-obviousness must be considered only when the claimed invention is novel. 62 Terms such as "not identically disclosed" 63 and "did not 'literally infringe'" 64 have been used to describe novelty and invoke $ S 103 non-obviousness considerations. 65 For example, assume an inventor files a patent application claiming a microprocessor and disclosing it to be bright red in color. Because there is not a single reference or item of prior art showing a bright red microprocessor, the invention is indeed novel. 66 However since the physical and material design of this particular microprocessor has been known for some time, different colors are obvious features having no effect on the microprocessor's utilitarian design, thereby rendering the novel design [*588] unpatentable. If however, the red color is found to somehow cause the microprocessor to operate faster than a standard non-red one, then the claimed red microprocessor is also a non-obvious invention and patentability is possible. 67
As a general rule, the absence of a claimed element or limitation in an invention from the prior art reference eliminates the prior art's anticipation of the invention, rendering it patentable. 68 One unusual exception to this general rule developed from the Federal Circuit's In re Kathawala 69 opinion. Kathawala involved foreign and U.S. applications which disclosed new chemical compounds for inhibiting enzyme activity. However, the foreign patent which constituted $ S 102 prior art against the U.S. application claimed the process or method for making these new chemicals, while the analogous U.S. application claimed the useful compounds themselves. 70 Ordinarily, such distinct statutory classes of invention would allow the applicant to proceed with a showing of nonobviousness. 71 However, the Kathawala court affirmed the rejection of the applicant's U.S. composition of matter claim over the foreign process claim, on the basis of $ S 102(d) novelty (the foreign application issued before the U.S. application was filed), rather than $ S 103 non-obviousness, holding that the composition of matter and the method of making it are "aspects" of the same invention that was already patented from the foreign application. 72 Thus, these two inventions were judicially considered the same invention within the narrow context of $ S 102(d). However, as this case illustrates, no structural or functional difference between a claimed invention and the prior art may be ignored.
V. The Requirement of Non-Obviousness in Contrast to Invention
A. Historical Perspectives of Non-Obviousness--The Old Standards Under Great Atlantic & Pacific Tea Co. and Cuno Engineering
The original requirement for non-obviousness is actually a judicial construction, first described in 1850 in Hotchkiss v. Greenwood, where the Supreme Court held that more than novelty was required to distinguish an invention over prior art. 73 The differences of interpretation of obviousness among the federal circuits and the Supreme Court have been striking. Until $ S 103 described its standard of non-obviousness in 1952, the numerous cases decided after Hotchkiss relied on the "degree" or "amount of the invention" criterion to [*589] distinguish an invention over prior art. 74 Thus, while some cases attempted to develop objective indicia of non-obviousness, such as Reiner v. I. Leon Co. 75 and Lyon v. Bausch & Lomb Optical Co., 76 most courts from 1850 until the 1952 statute held to the "level of invention" standard, even in the face of strong objective evidence of non-obviousness. 77 Many of these cases relied upon indicia such as mere substitution of materials, rendering automatic what was previously done manually, or rearrangement of parts, which were held to preclude patentability as they were thought in no way to constitute the bases of invention. 78 Such negative rules of patentability came to dominate the judicially applied standards and reached a pivotal point in the infamous 1950 case of Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp. 79
1. Discovery and Non-Obviousness in Contrast to Invention
In Great Atlantic & Pacific Tea Co., the Supreme Court firmly fixed the notion of "invention," rather than mere discovery, 80 as being a reliable indicator of patentability when the appropriate novelty requirements are met. 81 The court summarized the "level of invention" standard of patentability in several ways. First, the most simple indicia of patentability arising from non-obviousness, such as meeting a long felt societal need or substantial commercial success--standards which might be rather objectively determined--were flatly rejected. 82 These, the Court reasoned, could not substitute for "invention" in establishing patentability. 83 Second, Justice Douglas' concurring opinion in Great Atlantic & Pacific Tea Co. stood for the proposition that patents should not be granted on "gadgets" that were "new," but rather only the true advances of the frontiers of science should be [*590] protected by patents. 84 Such "gadgets" seemed to include inventions that, however useful, novel, and non-obvious, were technologically simple or even mundane. Third, the highly subjective standard of "invention" rather than "non-obviousness" was embraced by the court in combination patents, 85 in what appears to be a serious miscalculation of how science and technology give rise to novel inventions. The Great Atlantic & Pacific Tea Co. Court suggested that "Courts should scrutinize combination patent claims with a care proportioned to the difficulty and improbability of finding invention in an assembly of old elements." 86
Judge Learned Hand of the Second Circuit appreciated this miscalculation the Court had made in Great Atlantic & Pacific Tea Co. when he took issue with the concept of "invention" in combination patents. Judge Hand observed that "it is idle to say that combinations of old elements cannot be inventions; substantially every invention is for such a 'combination': that is to say, it consists of former elements in a new assemblage." 87 Indeed, as early as 1955 Judge Hand provided a clearly reasoned explanation of non-obviousness that presaged the "secondary indicia" redefined by the Supreme Court more than a decade later, when he stated:
The most competent workers in the field had at least ten years been seeking [this invention]; there had been a number of attempts, none satisfactory; meanwhile nothing in the implementary arts had been lacking to put the advance into operation; when it appeared, it supplanted the existing practice and occupied substantially the whole field. We do not see how any combination of evidence could more completely demonstrate that, simple as it was, the change had not been "obvious...to a person having ordinary skill in the art. 88
[*591]
2. Flash of Genius Test for Patentability
Another standard of patentability that developed and paralleled the "invention" standard was the judicial rule known as the "flash of genius" test, formalized in Cuno Engineering Corp. v. Automatic Devices Corp. 89 Such a test was probably an appealing and relatively easy standard for unsophisticated jurors and judges to apply who had little appreciation for the process of scientific and technological advances. 90 The criterion of a flash of creative genius is an attractive notion, especially when contrasted alongside the view of invention by a series of small steps, minor accomplishments, and above all, tenacious effort. However, some of society's most beneficial advancements, such as the development of modern pharmaceuticals, often require many years of painstaking research and development. 91
The flash of genius test was eventually rejected by the 1952 statute's $ S 103 standard of non-obviousness: "Patentability shall not be negatived by the manner in which the invention was made." 92 Years later, the Federal Circuit stated in Ryko Manufacturing v. Nu-Star, Inc. that this portion of $ S 103 was enacted expressly to overrule Cuno: 93
Only rarely now does a case turn on whether the "inventive act" took place instantaneously or over a long period of time. Indeed, the subjective condition of the inventor's mind at the time of the nonobvious development has been uniformly held by the Federal Circuit to be irrelevant to the question of patentability. 94
The Federal Circuit went on to stress in Ryko Manufacturing that courts must determine what would have been objectively obvious to one of ordinary skill in the art at the time of the invention, rather than trying to ascertain what was subjectively obvious to the inventor. 95 While the flash of genius test survived far longer than it should have, the Federal Circuit's opinions and the explicit language of $ S 103 ultimately eliminated the flash of creative genius as a standard by which to judge patentability. [*592]
B. Evolution of Non-Obviousness Under the Trilogy: New Indicia
In 1966, the Supreme Court provided a clear admonition that Great Atlantic & Pacific Tea Co.'s subjective abstraction of "invention" could no longer be supported, when Justice Clark handed down the patent "Trilogy" comprised of Graham v. John Deere Co., 96 Calmar, Inc. v. Cook Chemical Co. and ColgatePalmolive Co. v. Cook Chemical Co. 97 which had been consolidated on appeal, and U.S. v. Adams. 98 For the first time since the patent statute was enacted in 1952, the Supreme Court provided clear guidelines for the elusive concept of nonobviousness when $ S 103 was construed in Graham. In all three cases, the fundamental question consisted of whether the $ S 103 non-obviousness standard was met, 99 thereby validating the patent, and the Court's emphasis in all three cases was on non-obviousness over invention. 100
1. Graham v. John Deere Co.
The patented invention in Graham was a plow design that helped prevent damage to the shaft as it broke through rocky soil. 101 The plow shaft was attached to a hinge plate. The issue in this case was the location of attachment: was placing the shaft below this plate where it had more flex an obvious change from the original shaft attachment above the plate? 102 The now-conventional analysis for a determination of $ S 103 obviousness was first set forth in Graham and included the following elements. First, a determination of the scope and content of the prior art must be made by the court. 103 Second, the differences between the claims in issue and the prior art must be delineated. 104 Third, the measure of "ordinary skill in the art" with respect to the obviousness of the claims in issue (as derived from the first two prongs) should be established. 105 In applying this test to the new plow design the Court found that reversing the position of the plow shaft was obvious. 106 [*593]
Most importantly however, the Court went on to delineate the final indicia of non-obviousness: after an analysis of each of the above considerations, a series of what the court describes as "secondary considerations" must be examined. 107 The Graham court included the following inquiries as secondary considerations: the degree of commercial success of the invention that could be causally related to the invention itself, a long-felt but unsatisfied need for the invention, and the failure of others skilled in the art to fulfill that need. 108 These market responses have been linked to the so-called "economic doctrine of equivalents." 109 These secondary considerations of Graham came to incorporate the most significant elements of a determination of non-obviousness at the time. 110 The Federal Circuit has held that Graham's secondary considerations constitute a fourth step in the standard of non-obviousness. 111 Indeed, the intersection between the doctrine of equivalents and non-obviousness is significant, both from procedural and substantive points of view, 112 and will be examined briefly below.
2. Calmar, Inc. & Colgate-Palmolive Co. v. Cook Chemical Co.
In the Calmar case, the Supreme Court invalidated a patent that covered a closure mechanism for leak-proofing a sprayer bottle. 113 The decision cast some uncertainty on the Graham indicia of non-obviousness, since by the Graham criteria, a strong argument of non-obviousness could be made in Calmar. The Supreme Court compared the claims in the closure mechanism patent to the prior art and found that the mechanism would have been obvious to one skilled in the art. 114 This finding was made in the face of the commercial success of the closure mechanism 115 and its having resolved a long-felt need in this industry. 116 [*594]
3. United States v. Adams
Adams is a particularly useful chemical technology case where the claimed invention, a battery, was perhaps as close to a prior art battery as possible without direct infringement. 117 The Adams battery used a novel combination of electrodes (cuprous chloride and magnesium) that, according to the government, was anticipated by prior art teaching the equivalence of cuprous chloride and silver chloride electrodes, and the equivalence of magnesium electrodes and zinc electrodes. 118
The Supreme Court firmly rejected the government's argument that an invention so chemically similar to the prior art must be obvious, and therefore only physical or structural differences could be examined as a basis for nonobviousness. 119 Were these "merely equivalent substitutions," the Court stated, "it would follow that the resulting device--Adams'--would have equivalent operating characteristics." 120 This was clearly not the case. In fact, the performance of the Adams battery was so unexpectedly good and so far superior to existing batteries that it took a considerable amount of time for those skilled in the art to actually believe that it performed as it did. 121 Thus, the longstanding beliefs in the field actually prevented research into the specific combination that Adams hit upon.
The Adams Court pointed to several factors taken into account in reaching its decision. First, the current state of knowledge in the field actually "taught away" from the combination that Adams used in his invention. 122 Thus, the accepted standards that discouraged investigation in the area that Adams explored were specifically commented on when the Court stated that "known disadvantages in old devices which would naturally discourage the search for new inventions may be taken into account in determining obviousness." 123 Second, the Adams battery was a tremendous commercial success and was quickly adopted for military and scientific applications that were previously impossible, due to lack of an appropriate power source. 124 Finally, the differences between a claimed infringing device and the patented article must be examined in the context of all the evidence, including any operational aspects of the inventions. 125 In retrospect, this factor would allow a finding of non-obviousness for small changes which, in some technologies, would substantially improve the invention, while narrowly [*595] construing non-obviousness for an invention with large structural or physical changes that only provide a more complicated way to the same result. 126 The significance of this factor cannot be overstated.
C. Conflicting Views: Development of the Anderson's-Black Rock Case
Only three years after the Trilogy decisions by the Supreme Court, considerable confusion on non-obviousness ensued with the Supreme Court's decision in Anderson's-Black Rock, Inc. v. Pavement Salvage Co. 127 This case involved a combination patent apparatus that was used to lay a continuous strip of black-top pavement. 128 The Court held the patent to this apparatus invalid because it failed to meet the test of "invention," as "each of the elements combined in the patent was known in the prior art." 129 The Court went on to explain that "the combination of putting the burner together with the other elements in one machine, though perhaps a matter of great convenience, did not produce a 'new or different function....'" 130 This "new or different function" conclusion was further elaborated:
We conclude that while the combination of old elements performed a useful function, it added nothing to the nature and quality of the radiant-heat burner already patented. We conclude further that to those skilled in the art the use of the old elements in combination was not an invention by the obvious-nonobvious standard. 131
In what can only be described as an explicit return to the "invention" test of Great Atlantic & Pacific Tea Co., with only minor deference to the secondary indicia of the Trilogy, the Court further explained:
A combination of elements may result in an effect greater than the sum of the several effects taken separately. No such synergistic result is argued here. It is, however, fervently argued that the combination filled a long felt want and has enjoyed commercial success. But those matters 'without invention will not make patentability.' 132
This result seemed to raise more questions than it answered. When a combination patent is involved, what happens to the Trilogy's non-obviousness standard? Is this "invention" test to be used along with the Trilogy's secondary considerations when dealing with combination patents? [*596]
Professor Kayton, in an attempt to outline an appropriate inquiry for the practitioner in applying Anderson's-Black Rock alongside the Court's test in the Trilogy, put forth several suggestions. 133 First, a determination whether the claimed invention comprises a combination of "old" or already known elements must be made. 134 If it does, then one must determine if the combination produces a new or different function rather than just a new or different result. 135 Finally, just how new, unexpected, or different a combination of old, known elements must be to attain patentability must then be determined. 136 However, as further described by Professor Kayton, the problem with such a scenario is that any and every invention involves some combination of old elements, or in the case of a process patent, some combination of old steps. 137
The effect the Anderson's-Black Rock formulation of the old Great Atlantic & Pacific Tea Co. "invention test" has on the Trilogy's secondary indicia seems to be as follows: secondary considerations are in fact "primary evidence" 138 of what the level of ordinary skill in the art is; thus non-obviousness must be determined with a view toward these secondary considerations. However, "those matters, 'without invention will not make patentability.'" 139 Thus, Anderson's-Black Rock in effect reintroduced the concept that an unanticipated result, taught away from by experts in the art, does not provide for patentability unless the invention functions in a different way. 140
D. Further Conflicting Views: Sakraida v. Ag Pro, Inc.
The Supreme Court had an opportunity to clarify the obviousness question vis-a-vis "invention" when it reviewed the Fifth Circuit's decision in Sakraida v. Ag Pro, Inc. 141 This patent infringement case involved the obviousness of an automated water flush system to remove cow manure from the floor of a dairy barn. 142 The Western District of Texas embraced the old Great Atlantic & Pacific Tea Co. standard, via Anderson's-Black Rock, requiring "invention" and held the invention invalid. 143 However, the Fifth Circuit reversed the district court and held the patent valid by specifically examining the secondary considerations of Graham. 144 The Supreme Court reversed the Fifth Circuit and affirmed the [*597] district court's finding. 145 Despite the Fifth Circuit's finding of a "synergistic result," the Supreme Court held that old elements in combination do not constitute a patentable result without invention. 146 Thus, the specific finding in Ag Pro seemed to reject the holding of Adams, in which an unexpectedly good result arising from substitutions was a central feature in the determination that these were not "merely equivalent substitutions." 147 The future of the Trilogy was in question as the Supreme Court seemed to ignore the significance of secondary considerations and the Graham framework in its determination of obviousness. 148
VI. Current Views and Current Issues of Non-Obviousness in the Federal Circuit
A. Decisions on Non-Obviousness: A Return to the Indicia of the Trilogy
After the Anderson's-Black Rock and Ag Pro decisions, confusion prevailed among the district courts and various circuits in their applications and opinions on $ S 103. Such a result clearly arose from the Supreme Court's own mutually incompatible rules in the Great Atlantic & Pacific Tea Co., Graham, Anderson's-Black Rock, and Ag Pro line of cases. 149 The most consistent rulings, and by some interpretation the most correct, were from courts that adhered to the Graham rules and relegated the later Supreme Court cases as inapplicable special fact situations. 150 For example, the Court of Claims and the Court of Customs and Patent Appeals largely adhered to Graham. 151 The regional circuits however, usually attempted to superimpose rules of other Supreme Court cases over those of Graham, forming a highly unpredictable forum in which to litigate patent validity and infringement. Interestingly, one of the more consistent circuits was the Eight Circuit, which held every single patent it examined invalid over the twenty year period from 1950 to 1970. 152
With the creation of the Court of Appeals for the Federal Circuit in 1982, a new era of predictability of patent validity and infringement was ushered in, and many of the problems with forum shopping that had plagued patent litigation until that time promised to end. 153 All patent appeals, whether from the Patent and [*598] Trademark Office, the Court of Claims, or any district court, were funneled to the Federal Circuit, to which certiorari may be granted to the Supreme Court. 154
B. The Federal Circuit's Current View of Non-Obviousness
Creation of the Federal Circuit in 1982 has generally resulted in predictability in litigating patent infringement under $ S 103. This predictability derived from an en banc decision in which the Federal Circuit determined that the holdings of its predecessor courts, the Court of Claims and the Court of Customs and Patent Appeals, which had adhered to Graham's secondary considerations, were binding precedent in the new Federal Circuit. 155 This single holding promised future consistency for $ S 103 non-obviousness inquiries in the Federal Circuit; a promise that has largely been fulfilled through the maturing case law in this area. The Federal Circuit's current view of non-obviousness reflects its finetuning of the Trilogy's indicia, and has recently been summarized by Professor Kayton. 156 Kayton's synopsis of $ S 103 highlights, as illustrated by recent Federal Circuit cases, includes the following propositions.
1. There is a single standard for non-obviousness for all types of inventions since most, if not all, inventions are to some extent innovative combinations of known elements. 157 In Kimberly-Clark Corp. v. Johnson & Johnson, the Federal Circuit described this conclusion: "It is immaterial...that all of the elements were old in other contexts. What must be found obvious to defeat the patent is the claimed combination." 158
2. In examining the differences between the claims at issue and the prior art (the second factual inquiry of Graham), the court must view the claims at issue as the invention as a whole. 159 Thus, it is essential to consider all elements of the claimed invention and it is not permissible to compare the prior art with the gist of the invention to be, nor is it permissible to focus on the obviousness of substitutions and differences between the claimed invention and the prior art. 160
3. The objective indicia of Graham are the most powerful evidence of non-obviousness, and properly should be considered as the fourth factual inquiry [*599] in the Graham test. 161 A determination of obviousness through an after-the-fact examination of the invention with the teachings of the inventor available is not acceptable and, in fact, is refuted by the non-obviousness indicia. 162
4. In determining the level of ordinary skill in the relevant art, the third factual inquiry of Graham, the criteria described in Environmental Designs, Ltd. v. Union Oil 163 and Bausch & Lomb, Inc. v. Barnes-Hind/Hydrocurve, Inc., 164 are to be considered. These criteria include the type of problems encountered in the art, prior art solutions to those problems, the rate at which innovations in the art are made, the sophistication of the technology, and the educational level of active workers in the field, excluding the inventor. 165 The educational level of the inventor is specifically not to be considered. 166
5. A decision by the Patent and Trademark Office ("PTO") or the district courts concerning obviousness cannot be made without evaluating the objective evidence of non-obviousness, including Graham's secondary considerations. 167
6. Obviousness is to be judged from the prior art inventions themselves, without recourse to the teachings of the patent application or patent itself. 168 Without an independent suggestion of obviousness, the prior art becomes a mere suggestion for unguided experimentation, which is not the standard for obviousness. 169
C. Practical Considerations in Attacking Prima Facie Obviousness
In order to fully appreciate the scope of the Federal Circuit's judgments on non-obviousness, it is useful to examine selected cases in which patent validity has been attacked on $ S 103 grounds, and the Federal Circuit's response to that attack. These practical guidelines regarding prima facie obviousness have been adapted from Professor Kayton's extensive look at this subject. 170 [*600]
1. Obviousness in Combination Patents Requires a Basis for that Combination
Mere combination of prior art, without the prior art teaching that combination, is insufficient to establish obviousness. As the Federal Circuit established in ACS Hospital Systems, Inc. v. Montefiore Hospital, "Obviousness cannot be established by combining the teachings of the prior art to produce the claimed invention, absent some teaching or suggestion supporting the combination." 171 Thus, a combination patent cannot be invalidated by using the patent to examine prior art for claimed elements, and then combining them as claimed. 172
2. The Needle in a Haystack Problem: An "Obvious to Try" Modification Is Not Prima Facie Obviousness
Even if prior art teaches a particular modification or combination, accomplishing that combination successfully may not constitute an obvious invention if there is no reasonable expectation of the success of that teaching. 173 Thus, "obvious to try" is not prima facie obviousness. This is the classic "needle in a haystack" problem where the references may suggest what an inventor has done, but that suggestion contains no reasonable expectation of the invention being successfully carried out. For example, if the only barrier to preparing a new anti-tumor drug is finding an oxidant with a very specific redox potential, the patent will not be invalidated if the inventor was successful in identifying the proper compound from among the millions of possible choices through trial-anderror diligence or through simple luck. 174 The implications of this result in affording protection of new drug and pharmaceutical designs are highly significant.
3. Lack of Technological Motivation Negates Obviousness
If prior art is combined or modified in a way that negates its intended function, i.e. there is a disincentive for the combination, then $ S 103 obviousness cannot be established. 175 Thus, if there is no technological motivation for a particular combination, then the result is non-obvious.
4. A Combination Using Non-analogous Art Is Non-Obvious
If references to prior art are so remote from the art of the claimed invention that the person of ordinary skill would not seek to solve the problem [*601] addressed in the invention using these remote arts, then $ S 103 obviousness cannot be established. 176 However, determining exactly what constitutes "non-analogous art" requires particular scrutiny. If the prior art reference is not within the field of the inventor's endeavor, then a court should "proceed to determine whether the reference is reasonably pertinent to the particular problem with which the inventor was involved." 177 The Federal Circuit has simply stated that it is necessary to use "common sense" in deciding the issue of whether prior art was non-analogous. 178
5. If Prior Art Does Not Recognize the Problem, Its Inventive Solution Is Non-Obvious
The classic case in this area is Eibel Process Co. v. Minnesota and Ontario Paper Co. which stands for the proposition that discovering the source of a problem can result in a non-obvious invention, even if the solution to that problem would have been obvious once the source was known. 179 Such a holding reflects the $ S 103 statutory requirement of determining obviousness by considering the "subject matter as a whole." 180 Similarly, the Peehs court held that where the advance in the art is in the discovery of the problem, prima facie obviousness can only be established if a person of ordinary skill in the art at the time of the invention would have recognized that a problem existed. 181
6. Routine Steps in a Process Patent Are Not Prima Facie Obvious When the Material It Produces (or Uses) Is Patentable
Until recently, the law seemed to state that a prior art process is prima facie obvious even when the material produced or used in the process is itself patentable. 182 However, in 1990, the Federal Circuit in In re Pleuddemann held that a known process of using a patentable compound was necessarily patentable where the court properly analyzed the claims in their entirety as required by the Graham factors. 183 In 1995, the Federal Circuit specifically held that when the starting materials and products are themselves patentable, such patentability will render the claimed process itself patentable. 184 Such a holding affords overlapping patent protections. For example, the inventors of a new drug will be protected since both the drug and any synthetic process by which it is made are patentable. [*602]
VII. The Intersection of Non-Obviousness and the Doctrine of Equivalents
As detailed in $ S 112 of the Patent Act, the "specification" of a patent includes a written description of the invention, an explanation that will enable any person skilled in the art to make and use it, and a disclosure of the best mode contemplated by the inventor of carrying out the invention. 185 The specification must conclude with one or more specific claims that concisely articulate the invention. 186
Claims are the heart of a patent and define the limits of the intellectual property to be protected. Patent practitioners typically define the patent's first claim as broadly as the prior art will permit, and sequentially narrow their scope as successive claims are presented, to attain full coverage of the intellectual property to be protected. 187 Narrowing claims from this original claim of broad patent coverage is usually accomplished by either adding additional elements to successive claims, or by modifying an existing element within a broader claim. 188 When an infringer reproduces an invention, outright duplication or "literal infringement" is quite rare. Instead, the infringer usually attempts to make sufficient modifications that will bypass the patent protection of the original invention. 189 Issues such as the extent to which a replica infringes the claimed invention, and consequently just how broadly or narrowly a series of claims protects an invention, have been litigated under the doctrine of equivalents. 190 The intersection of the concepts of statutory non-obviousness and the doctrine of equivalents must be explored, since they are based on parallel notions: when is a potential infringing invention so close to the original that it is considered an obvious or equivalent extension of the original?
A. The Doctrine of Equivalents
The doctrine of equivalents stands for the proposition that, absent literal infringement, a purported infringing device may nonetheless be held to infringe if it is substantially the same as the claimed invention. 191 The historical test for "equivalents" relied upon by the courts, as set forth in Graver Tank & Mfg. Co. v. Linde Air Products Co., has been whether the possible infringing device "'performs substantially the same function in substantially the same way to obtain [*603] the same result.'" 192 Without such an outcome, the Court reasoned, patent protection would become ineffectual since the unscrupulous imitators would "make unimportant and insubstantial changes and substitutions in the patent which, though adding nothing, would be enough to take the copied matter outside the claim, and hence outside the reach of the law." 193 If a person of "ordinary skill in the art" recognizes a substitution as inconsequential and it results in an equivalent function, then equivalence may perhaps be established. 194 However, things not normally viewed as equivalent may be found to be equivalent in a particular invention if their utility is based on an equivalence of function. For example, in Textronix, Inc. v. United States, "a pair of series connected diodes" was stipulated in the claim, but the infringer utilized series connected triodes in some cases, and series connected pentodes in others. 195 The Textronix court found that the triodes and pentodes of the infringing device were used exclusively for their diode function, and not for their unique functions; accordingly, the court held infringement by the triode and pentode devices by equivalence. 196 Such a determination is intensely fact-specific however, since using known technology in unique ways is the basis of invention, making established or conventional equivalence difficult to apply. 197
B. The Doctrine of Equivalents After Warner-Jenkinson
The doctrine of equivalents has been controversial, and since the time of Graver Tank, courts have struggled to strike a balance between the fundamental need that the doctrine addresses and the necessity for predictability and consistency in patent practice. Indeed, through the 1980s and 1990s a number of panel decisions by the Court of Appeals for the Federal Circuit have questioned the applicability of the doctrine and have suggested its limited use. 198 The doctrine has been described as "a virtually uncontrolled and unreviewable license to juries to find infringement if they so choose." 199 In March of 1997, the Supreme Court addressed the doctrine of equivalents for the first time since Graver Tank in Warner-Jenkinson Co. v. Hilton Davis Chemical Co. 200 [*604]
In Warner-Jenkinson, the plaintiff's invention of a dye purification process involved "an aqueous solution...at a pH from approximately 6.0 to 9.0...." 201 The defendant's process used a solution pH of 5.0 which the jury found to be the "equivalent" of a pH of approximately 6.0 and therefore the defendant was found liable for infringement. 202 In a divided decision, the Federal Circuit affirmed the finding of infringement. 203 Despite reversal by the Supreme Court, the three fundamental issues regarding equivalents decided in the Federal Circuit's decision remained intact. First, the three-part test of "function, way, and result" embraced in Graver Tank is not the test of equivalents, but rather the "substantiality of the differences between the claimed and accused products of processes, assessed according to an objective standard." 204 Function, way, and result merely constitute one method to assess these differences. Second, "infringement under the doctrine of equivalents is an issue of fact to be submitted to the jury in a jury trial with proper instructions, and to be decided by the judge in a bench trial." 205 If there is substantial evidence of equivalence, the jury verdict will be upheld. 206 Third, the existence of an "equitable threshold" that limits applicability of the doctrine of equivalence to intentional infringers was rejected. 207 Thus, while the Supreme Court reaffirmed the essential applicability of the doctrine, the decision rejected many of the theories on which limitations of applying the doctrine had been based in previous years. 208 However, the extent to which the Federal Circuit panels may implement the Supreme Court's endorsement of the doctrine remains to be seen: no published decision since Warner-Jenkinson has upheld a jury finding of infringement under the doctrine.
C. Relationship Between Non-Obviousness and the Doctrine of Equivalents
The protections granted by statutory non-obviousness and the judiciallycreated doctrine of equivalents are largely complementary. 209 Non-obviousness and equivalents are both fundamentally based on the similar notion of what is apparent and evident to a mythical person of ordinary skill in the art. Courts cannot draw a bright line between literal infringement and infringement under the doctrine of equivalents, but rather should view infringement as existing somewhere along an infringement continuum between "literal" at one extreme, [*605] and "equivalent" at the other. 210 As one commentator described, "just as literal infringement is similar to novelty, infringement under the doctrine of equivalents is somewhat analogous to the nonobviousness requirement mandated by 35 U.S.C. $ S 103...." 211
When courts are concerned about the statutory non-obviousness of a device or process in order to determine patent validity, examination is made of the differences between the potentially patentable device (or process, etc.) and the prior art, typically using the Graham factors. 212 However, in applying the doctrine of equivalents, the court examines possible infringement of an accused device or process by a careful analysis of the differences between the patented invention and the accused infringing device. 213 One court described this analysis of the doctrine of equivalents as a determination of the extent to which the doctrine "casts around a claim a penumbra...." 214 Note the differences between these analyses, however. Under non-obviousness, the concern is between the entire relevant prior art and the claimed invention, whereas the doctrine of equivalents focuses on the difference between a single device and the claimed invention.
One important distinction that remains between non-obviousness determinations and the doctrine of equivalents relates to how the invention is perceived. Under Pennwalt Corp. v. Durand-Wayland Inc., the Federal Circuit required that equivalence under the doctrine of equivalents be determined by comparing the accused device with the claims on an element-by-element basis. 215 Thus, if a single element of a claim is missing from the accused infringing device, there can be no equivalence. 216 This method was validated in WarnerJenkinson, 217 whereas a determination of obviousness under the Trilogy does not per se require such a method.
VIII. Conclusion
The notion of non-obviousness, as well as the parallel concept of equivalence, have clearly evolved over time. With the inception of the Circuit Court of Appeals for the Federal Circuit in 1982, many of the problems with [*606] inconsistent rulings on non-obviousness have been solved, since all patent appeals are channeled to the Federal Circuit. 218 Moreover, the Federal Circuit's determination that the holdings of its predecessor courts, the Court of Claims and the Court of Customs and Patent Appeals (which subscribed to Graham) were binding precedent in the new Federal Circuit, afforded some predictability to $ S 103 non-obviousness inquiries. 219
Although this promise has largely been fulfilled, there still remain questions regarding just how different an invention must be from prior art before patent protection is upheld. 220 The interplay between statutory non-obviousness and judicial "equivalents," especially in the context of combination patents, suggests that this area will persist as one of active judicial interpretation. This Note concludes with three observations about the current status of non-obviousness determinations in the Federal Circuit.
First, the Federal Circuit has clearly embraced the secondary considerations of the Trilogy as indicia of non-obviousness. Until fairly recently, the checkered history of $ S 103 non-obviousness left patent prosecutors and litigators with a tenuous ability to predict the outcome of obviousness questions. As outlined above, these questions are now far more ascertainable. Second, the Court's Warner-Jenkinson decision has limited the doctrine of equivalents such that its narrow construction is expected. This suggested narrow construction of equivalents by the Federal Circuit suggests a continuing "inventor's market" in patentability issues. Finally, the extent to which obviousness rejections of claims under $ S 103 in patent prosecution reflect this narrow construction of the doctrine of equivalence is an ongoing concern, and will continue to be an area of active judicial development.
Legal Topics:
For related research and practice materials, see the following legal topics:
Patent Law > Anticipation & Novelty > Elements
Patent Law > Utility Requirement > Chemical Compounds
Patent Law > Nonobviousness > Elements & Tests > General Overview
FOOTNOTES:
n1 U.S. Const. art. I, § 8, cl. 8. In contrast, the implied power of Congress to enforce Federal trademark law finds its foundation in the Commerce Clause. See U.S. Const. art. I, § 8, cl. 3.
n2 See Edmund W. Kitch & Harvey S. Perlman, Intellectual Property and Unfair Competition, 801-04 (1998).
n3 See Patent Act of 1952, ch. 950, 66 Stat. 792 (codified as amended at 35 U.S.C. § § 1-376 (1994)); Patent Act of 1939, ch. 451, 53 Stat. 1212; Patent Act of 1870, ch. 230, 16 Stat. 198; Patent Act of 1839, ch. 88, 5 Stat. 353; Patent Act of 1836, ch. 357, 5 Stat. 117; Patent Act of 1793, ch. 11, 1 Stat. 318; Patent Act of 1790, ch. 7, 1 Stat. 109. See also Irving Kayton, Patent Practice 1.5 (6th ed. 1998).
n4 This fact turns on the Supremacy Clause of the Constitution. See U.S. Const. art. VI, § 2; Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225, 230-31 (1964).
n5 See, Kayton supra note 3, at 1.5.
n6 See id. at 1.7. In 1982, the Court of Appeals for the Federal Circuit was created and subsumed patent appeals from two former appeals courts. Prior to 1982, the various circuit courts of appeal heard appeals from the district courts while the Court of Customs and Patent Appeals heard appeals from the Patent and Trademark Office Board of Patent Appeals and Interferences. See Arthur R. Miller & Michael H. Davis, Intellectual Property: Patents, Trademarks, and Copyright 121-23 (1990).
n7 See Kayton, supra note 3, at 1.7.
n8 See 35 U.S.C.A. § 103 (1998).
n9 See id. § 261. See also Miller & Davis, supra note 6, at 10.
n10 See 35 U.S.C.A. § 271. See also Lewis C. Lee & J. Scott Davidson, Managing Intellectual Property Rights 11 (1993).
n11 U.S. Const. art. I, § 8, cl. 8.
n12 See 35 U.S.C.A. § 101.
n13 See id. § § 100-173. Design patents and plant patents have significantly different requirements for patentability in terms of patentable subject matter and the nature of the patent application and prosecution itself. See id. § § 161-164, 171-173. This Note is concerned only with "utility" patents described in the Patent Act, 35 U.S.C.A. § § 100-105.
n14 See Lee & Davidson, supra note 10, at 11.
n15 See 35 U.S.C.A. § 171.
n16 See id. § 161.
n17 See id. § 112.
n18 See id.
n19 See id. § 101.
n20 See id. § 102.
n21 See id. § 101.
n22 See id. § 103.
n23 See id. § 112.
n24 See id. See also Lee & Davidson, supra note 10, at 17.
n25 35 U.S.C.A. § 101.
n26 See id. See also Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980); Lee & Davidson, supra note 10, at 17-18.
n27 See Diamond, 447 U.S. at 309.
n28 See In re Abele, 684 F.2d 902, 906 (C.C.P.A. 1982).
n29 See State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368, 1373 (Fed. Cir. 1998).
n30 See Ex parte Allen, 2 U.S.P.Q.2d 1425, 1426 (B.P.A.I. 1987).
n31 See 35 U.S.C.A. § 102.
n32 See id. § 102(b).
n33 See id. § 102(d).
n34 See id. § 101.
n35 See id. § 112. See also Miller & Davis, supra note 6, at 67.
n36 See 35 U.S.C.A. § 101. See also Miller & Davis, supra note 6, at 67.
n37 See 35 U.S.C.A. § 103.
n38 Id. § 103(a).
n39 See id. § 112.
n40 Id.
n41 See id.
n42 See Kayton, supra note 3, at 4.1. These criteria include such objective measures as the filing date of the patent application as well as the date the item sought to be patented was invented. See 35 U.S.C.A. § 102.
n43 35 U.S.C.A. § 102.
n44 See id. § 102(a), (e), (g).
n45 See id. § 102(b), (d).
n46 See id. § 102(c).
n47 Id. § 102(f).
n48 See id. § 102(g).
n49 In contrast, the first to file obtains such protection in foreign countries. See Lee & Davidson, supra note 10, at 144.
n50 See 35 U.S.C.A. § 102(g). See also Miller & Davis, supra note 6, at 59-65.
n51 See 35 U.S.C.A. § 102(g). See also Robert P. Merges et al., Intellectual Property In The New Technological Age 187 (1997).
n52 See 35 U.S.C.A. § 102(a).
n53 See id. § 102(e).
n54 See id. § 102.
n55 See id. § 102(b).
n56 See id. § 103.
n57 See generally Kayton, supra note 3, at 5.24-.25.
n58 35 U.S.C.A. § 103(a).
n59 See id. § 103.
n60 Id. § 103(c).
n61 See infra Part V.
n62 See 35 U.S.C.A. § 103(a).
n63 Id.
n64 Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 613 (1950).
n65 See generally Graham v. John Deere Co., 383 U.S. 1 (1966). See also Kayton, supra note 3, at 5.2.
n66 See generally Kayton, supra note 3, at 5.2.
n67 See generally id.
n68 See 35 U.S.C.A. § 103. See also Kayton, supra note 3, at 5.3; Miller & Davis, supra note 6, at 112-14.
n69 9 F.3d 942 (Fed. Cir. 1993).
n70 See id. at 944-45.
n71 See 35 U.S.C.A. § 101. See also Kayton, supra note 3, at 5.3.
n72 See In re Kathawala, 9 F.3d at 945.
n73 See Hotchkiss v. Greenwood, 52 U.S. (11 How.) 248, 265 (1850).
n74 Id. at 256. See also Kayton, supra note 3, at 5.5-5.7.
n75 285 F.2d 501, 503-04 (2d Cir. 1960).
n76 224 F.2d 530, 535-36 (2d Cir. 1955).
n77 See id. See also Kayton, supra note 3, at 5.7.
n78 See Hotchkiss, 52 U.S. (11 How.) at 262. See also Kayton, supra note 3, at 5.5-5.7.
n79 340 U.S. 147 (1950).
n80 The Supreme Court had previously elaborated "invention" in Lincoln Engineering Co. v. Stewart-Warner Corp., 303 U.S. 545 (1938), with similar negative rules of patentability.
The mere aggregation of a number of old parts or elements which, in the aggregation, perform or produce no new or different function or operation than that theretofore performed or produced by them, is not patentable invention. And the improvement of one part of an old combination gives no right to claim that improvement in combination with other old parts which perform no new function in the combination.
Id. at 549-50 (footnotes omitted).
n81 See Great Atlantic & Pacific Tea Co., 340 U.S. at 150-51.
n82 See id. at 152-53.
n83 See id.
n84 See id. at 154-55 (Douglas, J., concurring). This proposition was embraced by the lower courts until the Supreme Court finally held in Graham v. John Deere Co., 383 U.S. 1 (1966), that the "useful arts" that are constitutionally protected, see U.S. Const., art. I, § 8, included the "gadgets" that Justice Douglas described in that concurring opinion. See Great Atlantic & Pacific Tea Co., 340 U.S. at 155 (Douglas, J., concurring).
n85 See Great Atlantic & Pacific Tea Co., 340 U.S. at 148.
n86 Great Atlantic & Pacific Tea Co., 340 U.S. at 152 (emphasis added). A combination patent is one in which old elements are combined to produce a new result. See Miller & Davis, supra note 6, at 124. Thus, it is only the combination of elements that constitutes the patentable subject matter. See generally Great Atlantic & Pacific Tea Co., 340 U.S. at 147-58. Considerable controversy has surrounded the question of whether a synergistic result is required for the combination to be patentable. See, e.g., Sakraida v. Ag Pro, Inc., 425 U.S. 273 (1976); Palmer v. Orthokinetics, Inc., 611 F.2d 316, 323-25 (9th Cir. 1980).
n87 Reiner v. I. Leon Co., 285 F.2d 501, 503 (2d Cir. 1960).
n88 Lyon v. Bausch & Lomb Optical Co., 224 F.2d 530, 535 (2d Cir. 1955) (citation omitted).
n89 314 U.S. 84, 91 (1941).
n90 Justice Frankfurter noted in a dissenting opinion several years after the Cuno decision that the training of Anglo-American judges ill suits them to try or review patent cases. See Marconi Wireless Tel. Co. v. United States, 320 U.S. 1, 60-61 (1943) (Frankfurter, J., dissenting).
n91 See generally Charles N. Satterfield, Heterogeneous Catalysis In Industrial Practice (2d ed. 1991).
n92 Patent Act, 35 U.S.C.A. § 103 (1998).
n93 950 F.2d 714, 718 (Fed. Cir. 1991).
n94 See id. (citing Kloster Speedsteel AV v. Crucible Inc., 793 F.2d 1565, 1574 (Fed. Cir. 1986)).
n95 See id.
n96 383 U.S. 1 (1966).
n97 383 U.S. 1 (1966). Calmar, Inc. v. Cook Chemical Co. and Colgate-Palmolive Co. v. Cook Chemical Co. were consolidated and then decided with the Graham opinion. See id. at 3-5.
n98 383 U.S. 39 (1966).
n99 See Graham, 383 U.S. at 17; Adams, 383 U.S. at 51-52.
n100 See Graham, 383 U.S. at 14; Adams, 383 U.S. at 48-52.
n101 See Graham, 383 U.S. at 19-21.
n102 See id.
n103 See id. at 17.
n104 See id.
n105 See id. at 17-18. Many of the patent validity issues require courts to examine and interpret the knowledge and intellectual prowess of a person of "ordinary skill in the art" as stated in § 103 of the Patent Act. See Patent Act 35 U.S.C.A. § 103(a) (1998). See, e.g., Amgen, Inc. v. Chugai Pharm., 927 F.2d 1200, 1213 (Fed. Cir. 1991) (enablement); Texas Instruments v. USITC, 871 F.2d 1054, 1061-63 (Fed. Cir. 1989) (best mode and description and definiteness); In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988) (undue experimentation); United States v. Telectronics 857 F.2d 778, 786 (Fed. Cir. 1988) (definiteness).
n106 See Graham, 383 U.S. at 24-26.
n107 Id. at 17-18. The secondary considerations of Graham, are secondary only in a chronological sense, not in evidentiary importance. See Kayton, supra note 3, at 5.12.
n108 See Graham, 383 U.S. at 17-18.
n109 Timothy J. Douros, Lending the Federal Circuit a Hand: An Economic Interpretation of the Doctrine of Equivalents, 10 High Tech. L.J. 321, 345-48 (1995).
n110 See Kayton, supra note 3, at 5.9.
n111 See Vandenberg v. Dairy Equip. Co., 740 F.2d 1560, 1566-68 (Fed. Cir. 1984).
n112 See generally Gregory B. Sephton, Biotechnology: The Doctrine of Equivalents and Infringement of Patented Proteins, 25 Suffolk U. L. Rev. 1035 (1991) (examining this intersection with respect to biotechnology patents).
n113 See Graham, 383 U.S. at 4.
n114 See id. at 32-37.
n115 See id. at 35-36.
n116 See id. The argument has been made that, had the Supreme Court actually followed the Graham rules in Calmar and indeed, in Graham itself, the Court would have validated both patents. See Kayton, supra note 3, at 5.18-19.
n117 See United States v. Adams, 383 U.S. 39, 42-43 (1966).
n118 See id. at 48.
n119 See id. at 48-52.
n120 Id. at 51.
n121 See id. at 44. This fact was considered significant by the Court. See id. at 51-52. See also Kayton, supra note 3, at 5.11.
n122 See Adams, 383 U.S. at 52.
n123 Id.
n124 See id. at 44.
n125 See id. at 42-48.
n126 See generally Kayton, supra note 3, at 5.11.
n127 396 U.S. 57 (1969).
n128 See id. at 57-59.
n129 See id. at 59.
n130 Id. at 60 (citation omitted).
n131 Id. at 62-63 (footnote omitted).
n132 Id. at 61 (quoting Great Atlantic & Pacific Tea Co. v. Supermarket Equip. Corp., 340 U.S. 147, 153 (1950)).
n133 See Kayton, supra note 3, at 5.13-.14.
n134 See id.
n135 See Anderson's-Black Rock, 396 U.S. at 60.
n136 See Kayton, supra note 3, at 5.13-.14.
n137 See id. at 5.14.
n138 See id. at 5.15.
n139 Anderson's-Black Rock, 396 U.S. at 61 (quoting Great Atlantic & Pacific Tea Co. v. Supermarket Equip. Corp., 340 U.S. 147, 153 (1950)).
n140 See Kayton, supra note 3, at 5.15.
n141 425 U.S. 273 (1976).
n142 See id. at 273-74.
n143 See id. at 274.
n144 See id. at 280.
n145 See id. at 274-75.
n146 See id. at 281-83.
n147 United States v. Adams, 383 U.S. 39, 51 (1966).
n148 See Sakraida, 425 U.S. at 279-80.
n149 See Kayton, supra note 3, at 5.17, 5.20.
n150 See id. at 5.19.
n151 See id.
n152 See id. In 1971, the Eighth Circuit held a patent valid by overruling the trial judge who stated that, even though utility and novelty were established, he was obliged to hold the patent invalid on the basis of obviousness, due in part to the Eighth Circuit's hostility to patent validity. See Woodstream Corp. v. Herter's, Inc., 312 F. Supp. 369, 370-71 (D. Minn. 1970), rev'd, 446 F.2d 1143 (8th Cir. 1971).
n153 See Miller & Davis, supra note 6, at 121-23 (1990).
n154 See id.
n155 See South Corp. v. United States, 690 F.2d 1368, 1369 (Fed. Cir. 1982).
n156 See Kayton, supra note 3, at 5.20-.24.
n157 See Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1575 (Fed. Cir. 1987); Medtronic, Inc. v. Cardiac Pacemakers, Inc., 721 F.2d 1563, 1566 (Fed. Cir. 1983); Environmental Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 698 (Fed. Cir. 1983).
n158 Kimberly-Clark Corp. v. Johnson & Johnson, 745 F.2d 1437, 1448 (Fed. Cir. 1984).
n159 See generally Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367 (Fed. Cir. 1986); Perkin-Elmer Corp. v. Computervision Corp., 732 F.2d 888 (Fed. Cir. 1984).
n160 See Vas-Cath Inc. v. Muhurkar, 935 F.2d 1555 (Fed. Cir. 1991).
n161 See Simmons Fastener Corp. v. Illinois Tool Works, 739 F.2d 1573, 1575 (Fed. Cir. 1984) (referring to the secondary considerations as Graham's fourth factual inquiry).
n162 See In re Piasecki, 745 F.2d 1468, 1471-75 (Fed. Cir. 1984).
n163 713 F.2d 693, 696-97 (Fed. Cir. 1983).
n164 796 F.2d 443, 449-50 (Fed. Cir. 1986).
n165 See id.
n166 See Stewart-Warner Corp. v. City of Pontiac, 767 F.2d 1563, 1570 (Fed. Cir. 1985).
n167 See Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1575 (Fed. Cir. 1987); Hodosh v. Block Drug Co., 786 F.2d 1136, 1143 n.5 (Fed. Cir. 1986); Simmons Fastener Corp. v. Illinois Tool Works, 739 F.2d 1573, 1575 (Fed. Cir. 1984).
n168 See In re Amgen, Inc. v. Chugai Pharm. Co., 927 F.2d 1200 passim (Fed. Cir. 1991); In re Dow Chem. Co., 837 F.2d 469, 473 (Fed. Cir. 1988).
n169 See In re Amgen, 927 F.2d at 1200 passim; In re Dow Chem. Co., 837 F.2d at 473.
n170 See Kayton, supra note 3, at 5.29-.39C.
n171 ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577 (Fed. Cir. 1984) (footnote omitted).
n172 See In re Zurko, 111 F.3d 887, 888-90 (Fed. Cir. 1997), rev'd, 527 U.S. 150 (1999). See also Kayton, supra note 3, at 5.30.
n173 See In re Clinton, 527 F.2d 1226, 1228 (C.C.P.A. 1976).
n174 See In re Goodwin, 576 F.2d 375, 377 (C.C.P.A. 1978).
n175 See In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984).
n176 See In re Pagliaro, 657 F.2d 1219, 1224-25 (C.C.P.A. 1981).
n177 In re Wood, 599 F.2d 1032, 1036 (C.C.P.A. 1979).
n178 In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992).
n179 See generally Eibel Process Co. v. Minnesota and Ontario Paper Co., 261 U.S. 45 (1923).
n180 35 U.S.C.A. § 103(a) (1998).
n181 See In re Peehs, 612 F.2d 1287, 1290 (C.C.P.A. 1980).
n182 See In re Durden, 763 F.2d 1406, 1409-11 (Fed. Cir. 1985).
n183 See In re Pleuddemann, 910 F.2d 823 (Fed. Cir. 1990).
n184 See In re Ochiai, 71 F.3d 1565, 1569-70 (Fed. Cir. 1995). See also In re Brouwer, 77 F.3d 422, 425-26 (Fed. Cir. 1996).
n185 See 35 U.S.C.A. § 112.
n186 See id.
n187 See Kayton, supra note 3, at 3.2-.11.
n188 See id.
n189 See id. at 2.25.
n190 See, e.g., Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605 (1950).
n191 See id. at 607-08. Note that the Graver Tank decision antedated the 1952 Patent Act which codified non-obviousness as described above.
n192 Id. at 608 (quoting Sanitary Refrigerator Co. v. Winters, 280 U.S. 30, 42 (1929)).
n193 Id. at 607.
n194 See Hilton Davis Chem. Co. v. Warner-Jenkinson Co., 62 F.3d 1512 (Fed. Cir. 1995), rev'd and remanded, 117 S. Ct. 1050 (1997).
n195 Tektronix, Inc. v. United States, 165 U.S.P.Q. 392, 395 (Ct. Cl. 1970), aff'd, 445 F.2d 323 (Ct. Cl. 1971).
n196 See id. at 396.
n197 See generally Perkin-Elmer Corp. v. Westinghouse Elec. Corp., 822 F.2d 1528 (Fed. Cir. 1987).
n198 See Merges et al., supra note 51, at 242.
n199 Hilton Davis Chem. Co. v. Warner-Jenkinson Co., 62 F.3d 1512, 1538 (Fed. Cir. 1995) (Plager, J. dissenting), rev'd and remanded, 520 U.S. 17 (1997).
n200 520 U.S. 17 (1997).
n201 Hilton Davis, 62 F.3d at 1515.
n202 See id. at 1515-16.
n203 See id. at 1528-29.
n204 See id. at 1518.
n205 Id. at 1522.
n206 See id.
n207 See id. at 1523.
n208 See Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 17-20 (1997).
n209 See generally Sephton, supra note 112, at 1038-48.
n210 See Builders Concrete, Inc. v. Bremerton Concrete Prods. Co., 757 F.2d 255, 258 (Fed. Cir. 1985).
n211 See Sephton, supra note 112, at 1070 n.30.
n212 See Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966).
n213 See Sephton, supra note 112, at 1042-43.
n214 Autogiro Co. of America v. United States, 384 F.2d 391, 400 (Ct. Cl. 1967).
n215 See Pennwalt Corp. v. Durand-Wayland Inc., 833 F.2d 931, 935 (Fed. Cir. 1987) (en banc).
n216 The converse of this statement is not true, however. If a single element of the accused device (and its function) is missing from the claims of the patented invention, the claims still "read on" the accused device and infringement may be found. See, e.g., Lee & Davidson, supra note 10, at 11.
n217 See Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 19 (1997).
n218 This was true whether the appeal arose from the Patent and Trademark Office, the Court of Claims, or a district court. See, Miller & Davis, supra note 6, at 121-23 (1990).
n219 See South Corp. v. U.S., 690 F.2d 1368, 1369 (Fed. Cir. 1982).
n220 This is especially true given statutory limitations such as the § 103 mythical person "having ordinary skill in the art," and addressing the obviousness question "at the time the invention was made." 35 U.S.C.A. § 103(a) (1998).
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