Overview

1. Overview • Validity of patent hinges on novelty, utility, and non-obviousness • Utility generally not an issue • Pre-suit investigation focuses on infringement, novelty, and non-obviousness • Claim construction • Infringement • Validity (in 3 parts) • Is known art “prior art” under §102? • Does the known art “anticipate” any claims in the patent you want to enforce? • Claim-by-claim analysis • Does the known art make any of those claims obvious? • Claim-by-claim analysis • Even after suit filed, focus is on same issues • Difference is that parties have benefit of discovery

2. Obviousness • 35 U.S.C. §103: Conditions for Patentability • “A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 . . . , 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 of the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” • Obviousness argument typically based on combining two references or one reference and knowledge of POSA

3. Graham v. John Deere Co., 383 U.S. 1 (1966) • Test for determining obviousness • Determine scope and content of prior art • Determine the difference between the claimed invention and the prior art • Determine the level of ordinary skill in the art • Determine if there are any relevant secondary considerations

4. Secondary Considerations • Whether invention commercially successful as a result of the merits of the claimed invention • Whether the invention satisfied a long-felt need • Whether others had tried and failed to make the invention • Whether others invented the invention at roughly the same time • Whether others copied the invention • . . .

5. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) • Basic test for obviousness is set forth in Graham v. Deere • Obviousness is based on: • Whether one of skill would have had a reason to combine/modify the prior art to achieve the claimed invention; and • Whether there was a reasonable expectation of success to combine/modify the prior art

6. Perfect Web Tech. v. InfoUSA Inc., 587 F.3d 1324 (Fed. Cir. 2010) • KSR expanded “the sources of information for a properly flexible obviousness inquiry” to include, among other things, “recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference or expert opinion.” • Before KSR, had to find TSM in prior art reference(s)

7. Factors Relevant to Finding “Reason to Combine/Modify . . .” • Whether claimed invention merely the predictable result of using prior art elements according to their known function(s) • Whether claimed invention provides obvious solution to known problem in relevant field • Whether prior art teaches or suggests desirability of combining elements in the invention • Whether prior art teaches away from combining elements in claimed invention • Whether it would have been obvious to try the combination of elements • Obvious to try not sufficient in unpredictable technologies

8. Level of Ordinary Skill in the Art • Determined based on: • Levels of education and experience of those working in the field • E.g., Vitale vs. Hess • Types of problems encountered in the field • Prior art solutions to those problems • Rapidity with which innovations are made • The sophistication of the technology • E.g., Packaging vs. Brachytherapy • Recall level of skill also relevant to claim construction • How POSA would have construed term is a function of level of skill in the art

9. Examples of Obviousness Analysis • Claims in Perfect Web • Claims in ‘586 Patent and Bonekamp • Claims in ‘168 Patent and Liprie/Friedman and Bonzel/Friedman • Why bother with Liprie/Friedman and Bonzel/Friedman if Fischell and Dake are closer art?