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Patent Zapper - Obviousness in the Wake of KSR
Intellectual Property Update
May 8, 2008
In KSR Int'l. Co. v. Teleflex Inc., 127 S.Ct. 1727 (2007), the Supreme Court turned the clock on obviousness back to the basic framework set forth in Graham v. John Deere, 383 U.S. 1 (1966). In so doing, the Court in KSR rejected the formulaic use of the relatively clear rigid teaching, suggestion, or motivation test (the so-called "TSM test") for obviousness consistently employed by the Court of Appeals for the Federal Circuit in favor of an ad hoc and somewhat circular approach to determining obviousness that amounts to "... [i]f the claim extends to what is obvious, then it is invalid [for being obvious] under § 103 …" KSR at 1742.
Fortunately, the Court in KSR, by leaving Graham relatively unscathed, left open the possibility that objective evidence of nonobviousness might still provide a safe harbor of sorts for the patent holder.
However, post-KSR decisions of the Court of Appeals for the Federal Circuit in Leapfrog Enterprises, Inc. v. Fisher-Price, Inc. and Agrizap, Inc. v. Woodstream Corporation suggest that objective evidence of nonobviousness only provides a very limited safe harbor.
In particular, favorable or even substantial objective evidence of nonobviousness will not allow patent claims to survive a challenge on the basis of obviousness if the claims are directed to a "… combination of familiar elements according to known methods that [do] no more than yield predictable results. Leapfrog at 1161 (citing KSR at 1739); Agrizap at 1344 (citing KSR at 1739).
In Leapfrog, the claim at issue was directed to:
An interactive learning device, comprising:
- a housing including a plurality of switches;
- a sound production device in communication with the switches and including a processor and a memory;
- at least one depiction of a sequence of letters, each letter being associable with a switch; and
- a reader configured to communicate the identity of the depiction to the processor,
- wherein selection of a depicted letter activates an associated switch to communicate with the processor, causing the sound production device to generate a signal corresponding to a sound associated with the selected letter, the sound being determined by a position of the letter in the sequence of letters.
The prior art in Leapfrog included an older electro-mechanical learning device that provided the functionality of the claim – i.e., permitting a child to press a switch associated with a single letter in a word and hear the sound of the letter as it is used in that word - and a more modern electronic learning device that included a processor, memory and speaker to produce sounds in response to a child pressing switches provided in housing of the device.
The Court in Leapfrog concluded that one of ordinary skill in the art of children's learning toys would have found it obvious to combine the older electro-mechanical learning device with the more modern electronic learning device in order to update the older electro-mechanical learning device with the modern electronic components of the more modern electronic learning device.
The patent holder in Leapfrog provided evidence of nonobviousness that included commercial success, praise, and long-felt need - that the Court characterized as substantial. Nevertheless, the claim at issue in Leapfrog was held invalid as being obvious.
In Agrizap, one of the claims at issue was directed to:
An apparatus for electrocuting pests, said apparatus comprising:
a) a mechanical portion comprising:
- a high voltage electrode; and
- a reference electrode electrically isolated from said high voltage electrode; and
b) an electronic portion comprising:
- a resistive switch coupled between said high voltage electrode and said reference electrode, said resistive switch further comprising a trigger circuit having a trigger output and an arm/disarm input;
- a high voltage and current generator having a high voltage and current output coupled between said high voltage electrode and said reference electrode, and a control input by which operation of said generator is activated;
- a timing module having an input coupled to said trigger output of said resistive switch, a control output coupled to said generator control input and an arm/disarm output coupled to said arm/disarm input of said resistive switch; and
- wherein said resistive switch activates said timer with an active level on said trigger output when said resistive switch is armed by said timing module and one of said pests is in contact with said high voltage electrode and said reference electrode, said timing module turning on said generator with a continuous active level on said control output for a predetermined time period; and wherein said timing module disarms said trigger circuit of said resistive switch upon said activation of said timer module until said timing module is reset..
The prior art in Agrizap included an apparatus for electrocuting gophers – the Gopher Zapper – that included all of the elements of the above claim at issue except that the Gopher Zapper used a mechanical pressure switch instead of the resistive switch of the claim and prior art that disclosed that the use of an animal body as a resistive switch to complete a circuit was well known.
The Court in Agrizap concluded that since the prior art disclosed that an animal body could be used as a resistive switch to complete a circuit, it would have been obvious to use an animal body as the resistive switch in the Gopher Zapper.
The patent holder in Agrizap provided evidence of nonobviousness that included commercial success of a product called the Rat Zapper, copying by the Defendant, and long-felt need for electronic rat traps that were presumed to be favorable by the Court. Nevertheless, the claims at issue in Agrizap were held invalid as being obvious.
Given the patent zapping results of post-KSR decisions of the Court of Appeals for the Federal Circuit, objective evidence of nonobviousness may allow patent claims to survive a challenge on the basis of obviousness only if the claims are directed to a combination of familiar elements according to known methods that yield un-predictable results.
In other words, objective evidence of unexpected results achieved by and directly attributable to the claimed invention - including a comparison of those unexpected test results with the results obtained from the prior art - may be required in order to overcome a challenge of a patent claim on the basis of obviousness. Furthermore, such comparative test results should, if possible, always be included in the patent application in order to permit a robust response to a rejection of the claims on the basis of obviousness. Or, if later developed, and if needed, presented in the form of declarations during prosecution of the patent.
We are, in some sense, in uncharted waters going forward. In the post-KSR world, the precise boundaries of the nonobviousness safe harbor remain to be discovered.