Friday, March 21, 2014
Graham Factors
When handling cases involving nonobviousness, there is a set of factors known as the Graham factors that are examined. This originated from the Supreme Court case Graham vs. John Deere in 1996. Below are the list of the 4 commonly used Graham factors. I will also give some background information or input on each one:
1) Prior art - this is the most important factor when looking at nonobviousness - typically an examiner will put together a list of citations or references of all the elements of prior art used in the invention
2) Ordinary skill in the art - defines a certain category of people who identify with the subject area of the said invention - these will end up being critical people to understand what levels of knowledge would have been capable of easily thinking of the invention
3) Claimed invention vs. Prior art - this area will be crucial in terms of how the inventor will set up their argument of why their invention is not simply contained in prior art - for more information on this, see this week's videos
4) Objective evidence of nonobviousness - tests such as the TSM can be applied here, which adds to the objectivity in a naturally subjective concept
-Commercial success - even if a invention may seem obvious, if it proves commercial success there is a likely a desire that it meets that wasn't previously met by prior art
-Long felt but unsolved needs - even if people have felt the need for a certain invention, if it has gone unsolved until the said invention, it is likely the patent will be approved
-Failure of others - even if others have tried it, if they have failed, it is likely due to a lack of expertise or the lack of a necessary element either contained in a prior art or a newly synthesized element
1) Prior art - this is the most important factor when looking at nonobviousness - typically an examiner will put together a list of citations or references of all the elements of prior art used in the invention
2) Ordinary skill in the art - defines a certain category of people who identify with the subject area of the said invention - these will end up being critical people to understand what levels of knowledge would have been capable of easily thinking of the invention
3) Claimed invention vs. Prior art - this area will be crucial in terms of how the inventor will set up their argument of why their invention is not simply contained in prior art - for more information on this, see this week's videos
4) Objective evidence of nonobviousness - tests such as the TSM can be applied here, which adds to the objectivity in a naturally subjective concept
-Commercial success - even if a invention may seem obvious, if it proves commercial success there is a likely a desire that it meets that wasn't previously met by prior art
-Long felt but unsolved needs - even if people have felt the need for a certain invention, if it has gone unsolved until the said invention, it is likely the patent will be approved
-Failure of others - even if others have tried it, if they have failed, it is likely due to a lack of expertise or the lack of a necessary element either contained in a prior art or a newly synthesized element
TSM Test
One of the major knocks against the requirement of nonobviousness for a patent to be approved is the lack of tangible ways for one to prove nonobviousness. However, there are concrete ways to prove this. One such method is referred to as the TSM test, or Teaching-Suggestion-Motivation test. This test is widely applied to cases that involve nonobviousness, and is useful for eliminating the inevitable hindsight bias, especially in an increasingly innovative technology landscape.
In the case Winner International Royalty Corporation vs. Wang, it was stated that there must be a suggestion or teaching in the prior art to combine elements shown in the prior are in order to find a patent obvious. Nowadays, this concept has evolved to be known as the TSM test. It is helpful for judges so that they don't have to speculate on whether someone "skilled" in the art would have easily thought of this. Although it doesn't completely eliminate gray areas, it definitely narrows them.
However, the test has also been criticized as not concrete enough, as it has been applied slightly different across patent litigation cases. The people that are against TSM have said that the nature of the test should require explicit evidence that there was a teaching or suggestion to combine the elements. But, when it has actually been applied to cases, the federal government has made it clear that an implicit connection is enough. I see both sides of the argument. On one hand, if an implicit connection is enough, then does it really narrow the gray areas in these cases? But on the other hand, there are not many suggestions that are going to be found as explicit.
It is clear that there is no foolproof way of handling nonobviousness, but the TSM test is a step in the right direction.
In the case Winner International Royalty Corporation vs. Wang, it was stated that there must be a suggestion or teaching in the prior art to combine elements shown in the prior are in order to find a patent obvious. Nowadays, this concept has evolved to be known as the TSM test. It is helpful for judges so that they don't have to speculate on whether someone "skilled" in the art would have easily thought of this. Although it doesn't completely eliminate gray areas, it definitely narrows them.
However, the test has also been criticized as not concrete enough, as it has been applied slightly different across patent litigation cases. The people that are against TSM have said that the nature of the test should require explicit evidence that there was a teaching or suggestion to combine the elements. But, when it has actually been applied to cases, the federal government has made it clear that an implicit connection is enough. I see both sides of the argument. On one hand, if an implicit connection is enough, then does it really narrow the gray areas in these cases? But on the other hand, there are not many suggestions that are going to be found as explicit.
It is clear that there is no foolproof way of handling nonobviousness, but the TSM test is a step in the right direction.
Friday, March 7, 2014
File-history of a Patent
This week in class, we discussed the concept of a file history, which is an extremely important part of the patent application and approval process. Basically, the file history is all communications between the inventor and the patent examiner regarding the patent in question. This keeps transparency high and allows both sides to prove everything that they have claimed, if it ever had to be retrieved. This aspect is extremely helpful in court cases. The concept of a file history is one I had not heard of, but is clearly a useful tool provided by the USPTO to all parties involved.
The file history becomes extremely important if someone charges infringement on a certain patent. If a review of simply the patent does not prove infringement, often the examiner will next go through the file history to review the scope of the claims in the patent. Statements made by the inventor can go a long way in interpreting this. Especially when patents can be granted to overarching concepts that can be applied to various fields, it is important to truly narrow down the intended scope when the inventor initially filed for his/her patent. The file history can be the difference of millions of dollars for either side, or the difference between the ownership or rejection of a patent.
The file history becomes extremely important if someone charges infringement on a certain patent. If a review of simply the patent does not prove infringement, often the examiner will next go through the file history to review the scope of the claims in the patent. Statements made by the inventor can go a long way in interpreting this. Especially when patents can be granted to overarching concepts that can be applied to various fields, it is important to truly narrow down the intended scope when the inventor initially filed for his/her patent. The file history can be the difference of millions of dollars for either side, or the difference between the ownership or rejection of a patent.
Update on Apple vs. Samsung
A huge decision was layed down yesterday in probably the largest ongoing patent war between Apple and Samsung. Federal judge Lucy Koh, who has been overseeing much of the San Francisco-based parts of the trial rejected Apple's request to ban certain Samsung smartphones and tablets. These were devices that he been determined to infringe on various Apple patents. The same judge had previously ordered that Samsung pay damages to Apple amounting to $929 million, which is orders of magnitudes higher than most damages paid by smaller firms in similar cases. In this order, however, the judge concluded that the consumer demand was not driven by the infringing elements, which was the crux of Samsung's argument. Because of the fast-moving nature of the smartphone and tablet industries, the devices at question in the case are actually not even being sold anymore.
What I find interesting here, is that Apple tried to go in for the kill by requesting an injunction on sales for Samsung's phones and tablets. This came even though, as stated above, the devices in question would probably not even be on the market by the conclusion of the trial. I would have thought Apple would have been satisfied with the nearly $1 billion in damages that Samsung has to pay. However, I think this has to do with more than finances for both companies. Apple is trying to assert its dominance in the space, by employing expensive and aggressive litigation tactics. Although the result for this case wasn't detrimental to profits from sales, it was a huge win for Samsung in terms of morale and realizing that they can in fact survive the onslaught of Apple's litigation.
(Information obtained from http://www.reuters.com/article/2014/03/06/us-apple-samsung-injunction-idUSBREA251JM20140306)
(Information obtained from http://www.reuters.com/article/2014/03/06/us-apple-samsung-injunction-idUSBREA251JM20140306)
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