KSR Fears Realized: CAFC Off the Obviousness Deep End

Yesterday the United States Court of Appeals for the Federal Circuit, in a split decision with Judge Lourie writing and Judge Bryson joining, took a step forward in the evolution of the law of obviousness that confirms my worst fears about obviousness in this post-KSR era.

I have written about KSR v. Teleflex numerous times and we have engaged in thought-provoking and sometimes heated debate in the comments to those articles. We have argued about the extent to which the obviousness laws have changed, and many have sought to calm my fears by pointing out that even under the ridiculously naive approach to obviousness set forth by the Supreme Court in KSR it was still necessary under previous Supreme Court rulings that the prior art teach each and every element of the invention. In short, it has been argued by many that even after KSR it is not an appropriate rejection, or reason to invalidate an issued claim, that it would be “common sense” to modify elements within the prior art in a wholly new way and then combine the “common sense” modifications. I did agree that was true, at least until yesterday.

In Tokai Corp. v. Easton Enterprises, Inc., the Federal Circuit, over the correct, well written and forceful dissent of Judge Pauline Newman, took a step too far in applying the new KSR obviousness test. In truth, it is hardly correct to call the KSR approach a test since none was announced, the Supreme Court rather providing guidance and confirming its loathing for bright line rules that can actually be understood and uniformly applied. In Tokai the Federal Circuit explained, citing KSR, that the “nature of the mechanical arts is such that identified, predictable solutions to known problems may be within the technical grasp of a skilled artisan.” Then the bombshell: “It would have been obvious to one of ordinary skill and creativity to adapt the safety mechanisms of the prior art cigarette lighters, as disclosed in Floriot and/or Morris, to fit a utility lighter as disclosed by Shike, even if it required some variation in the selection or arrangement of particular components.”

Although murky in this announcement by Judge Lourie, if you read the facts and the Newman dissent it is clear that the elements combined were not within the prior art and that modification and variation of at least one of the components was necessary in order to have the required pieces and parts that could in any way create the invention in question. So now it is the law of the Federal Circuit that things that are not within the prior art but are close to being within the prior art can support an obviousness rejection under the Supreme Court’s “common sense” standard in KSR. This is true even when there are secondary considerations showing the superiority of the invention in question, market demand and copying of the invention by the industry.

Before I go any further allow me to notice what everyone in the industry to a person knows is true. There are Federal Circuit decisions that are simply never followed by the United States Patent and Trademark Office, they are ignored by the district courts and ignored by other panels of the Federal Circuit. That is why we can always say that there is a Federal Circuit case to support every proposition, even diametrically opposed positions. It is possible that Tokai will be one of those ignored cases, but there is also the distinct possibility that this case will not be ignored and could become a pivotal ruling that allows those who prefer not to issue patents within the Patent Office, as well as those district court judges who are hostile to patents, to make whatever obviousness rejections they want even when all of the pieces and parts are not found in the prior art. Now under Tokai they can simply find most of the pieces and parts in the prior art and then conclude without reason that it would be within the common sense understanding of one of skill in the art to modify the collection and then combine.

In any event, the invention patented by Tokai Corporation is a utility rod lighter of the sort used to light barbeques or fireplaces and the uniqueness of the innovation was owed to a novel safety mechanism that achieves a previously unattained level of child-safety over the prior art. The Tokai lighter displaced previously available child-safety rod utility lighters within the marketplace and received the ultimate compliment of industry competitors; it was copied. As Judge Newman described the core uniqueness of the invention: “The Tokai lighter has an ingenious safety design, whereby the device is simple to operate by adults but not by children, unlike prior art utility lighters, and locks automatically after use, unlike prior art utility lighters.” Judge Newman then went on to succinctly and in declarative terms explain: “The Tokai safety structure does not result from direct combination of the prior art. Nonetheless the district court, and now this court, hold on summary judgment that the asserted claims of the Tokai patents are invalid for obviousness. I must, respectfully, dissent.”

Yes friends, the district court and the Federal Circuit panel majority applied an overly expansive reading of the new obviousness laws to find that the claims in question were invalid on summary judgment. For those non-lawyers in the audience what that means is that the district court determined that there were no genuine issues of material fact and that the infringer was entitled to prevail as a matter of law. In lay terms, allow me to observe that it is usually virtually impossible to prevail on summary judgment because there is nearly always at least a single issue of material fact that is in dispute between the parties. A single issue of material fact alone prevents a party from winning on summary judgment. Excuse me for noticing the numerous issues of fact that are in dispute and making summary judgment wholly inappropriate.

If you need any support for the existence of material facts in dispute simply read the panel decision authored by Judge Lourie and then read the dissent authored by Judge Newman. It is almost as if they reviewing a different case. For example, with respect to whether secondary considerations weighed in favor of non-obviousness Judge Lourie wrote in part: “Tokai proffered no evidence from which one could reasonably infer a nexus between its sales data and its utility lighters’ automatic-locking features.” The word “proffered” is just a lawyers way to say “offered.” So what Judge Lourie wrote is that there was not a single shred of evidence that connected the success of the Tokai invention in the marketplace was tied to the uniqueness of the innovation. This is important because if there were evidence it would have created a genuine issue of material fact, thereby making summary judgment inappropriate. It would also have leaned heavily, along with other secondary considerations, toward a finding of on-obviousness.

But here is what Judge Newman wrote about the evidence of commercial success: “The defendants did not dispute Tokai’s evidence that its commercial success was due to its improved child-safety mechanism.” Judge Newman went on to write: “Tokai’s evidence of commercial success and copying of the patented device, taken with the structural differences and the differences in operation between the prior cigarette lighter safety mechanisms and the Saito utility lighter safety mechanism, as well as the differences between the auto-locking Saito mechanism and manual locking prior utility lighters, created at least genuine issues of material fact bearing on obviousness.”

Call me crazy, but that sure seems like quite a number of facts are in dispute. After all, if 1 in 3 Federal Circuit Judges reviewing the case can create a laundry list of facts where the parties disagree then summary judgment is wholly inappropriate. Summary judgment is supposed to be reserved for clear-cut cases where everyone agrees on the facts and there is only the need to apply the law. That was clearly not this case.

The invention in question, an improvement to the safety features of a BBQ grill lighter, used mechanical features to make it possible for the trigger to be pulled simultaneously with depression of the lock-releasing button. The closest prior art, which was the base reference upon which obviousness was premised, did not have any safety feature or mechanisms whatsoever. Thus, the Shike utility lighter needed to be combined with other prior art references having a safety mechanism. Thus, the district court and CAFC panel majority found the claims to be obvious over Shike in view of the safety features of a cigarette lighter patented to Morris and/or a cigarette lighter patented to Floriot. The totality of the combination even if made still could not produce the claimed device in question.

In both Morris and Floriot the safety mechanism for the lighter blocked the flow of gas. To initiate firing of the lighter the safety block needed to be disengaged and then the firing mechanism could be utilized to provide ignition of the flame. The mechanisms utilized required sequential actions, not simultaneous actions as in the claimed invention found obvious. Furthermore, Morris and Floriot do not require two-finger coordination to accomplish ignition of the flame. Furthermore, the Morris patent was cited during examination by the patent examiner noted the differences in mechanism and operation from the claimed invention; the Floriot patent is cumulative and both the Morris and Floriot patents were cited in the application disclosure. So the Patent Office considered these references and noted the different mechanisms of operation.

The Supreme Court has indicated that the Patent Office is like any other agency and entitled to deference in its determinations. So where is the deference? It seems suspiciously clear that the district court and the panel majority simply disagreed, but that is not supposed to provide the basis for overruling an agency determination. There will be some who will no doubt point out that the defendant here was not allowed to participate in the underlying patent application process where the agency determined that the claimed device was not obvious. That is quaint, but only part of the story and misleading to the point of being inaccurate. The defendant does have the ability to seek reexamination of the patent and get the Patent Office to reconsider the claimed invention either in an ex parte proceeding or inter partes proceeding. It seems to me that if we are going to treat the Patent Office the way that the Supreme Court says they are to be treated, like every other agency, then the agency determination should be overturned if and only if the determination was arbitrary and capricious. It certainly shouldn’t be overturned under any lesser standard when the defendant doesn’t even seek to allow the agency to correct the perceived wrong.

Judge Newman summarized her decision relative to obviousness by observing:

The district court held that it would have been obvious to a person of ordinary skill, defined for summary judgment purposes as a person with aptitude for high school shop class, to combine the various elements of the prior art to create the Saito device. However, the Saito device is not a simple insertion of the Floriot or Morris cigarette lighter safety mechanism into a utility lighter, as in the combination of known structures exemplified in KSR International Co. v. Teleflex, Inc., 550 U.S. 398 (2007). Where, as here, the features of one reference cannot be substituted into the structure of a second reference, this weighs against obviousness.

Indeed, where elements the secondary references cannot be neatly inserted into the primary reference to result in the claimed invention then the claimed invention is not supposed to be obvious. Any other determination necessarily means that common sense was here allowed to modify the parts of one reference prior to insertion into the primary reference. Thus, all the nice distinctions so many have been making about what KSR allows and what it does not allow seem to be swept under the rug and a nebulous, undefined “common sense” test that exalts hindsight is the rule. For crying out loud hindsight has always been impermissible and even the Supreme Court said that! Yet, the application of hindsight to determine what modifications a “high school shop class” would have made was allowed.

Question to Judges Lourie and Bryson: If a high school shop class would have been able to make the modification and then combination why didn’t they? Why was there only copying or the presence of infringing devices AFTER the introduction of the patented invention?

As Judge Newman points out, “incremental but unobvious improvements serve the public interest, and are included in the purpose of the patent incentive.” Without welcoming and protecting incremental improvements we might as well not have a patent system. Even the greatest inventor of all time, Thomas Edison, wouldn’t have been much of an inventor if not for improvements. If this “common sense to modify elements and then combine” test were around when Edison was inventing I wonder how many of his 1000+ patents he would have obtained. My guess is not very many.