1. PatentEng-Berkeley-Lavian Week 7: Anticipation and Obviousness 1 Patent Engineering IEOR 190G CET: Center for Entrepreneurship &Technology Week 7 Dr. Tal Lavian (408) 209-9112 Tlavian@cs.berkeley.edu 321 Haviland Mondays 4:00-6:00

2. 2 Claims & Elements I Patent must contain at least one claim Usually contains several claims –Claims are numbered and clearly distinct Infringement of single claim is sufficient for infringement –Need not infringe two or all claims Each claim usually contains several elements –Infringement requires correspondence between each element of a claim and an element of the allegedly infringing product or process –In literal infringement, the correspondence is exact Accused device or process has element exactly matching description in a patent claim –In doctrine of equivalents infringement, correspondence is not exact, but elements are “similar” and “equivalent” Elements in patent and accused device or process perform the same function in the same way to achieve the same result PatentEng-Berkeley-Lavian Week 7: Anticipation and Obviousness

3. 3 CLAIMS Claims define the legal effect of the patent! Learn a new VERB: READ ON - if a claim READS ON the prior art, the claim is INVALID - if a claim READS ON an accused device, the device INFRINGES the claim PatentEng-Berkeley-Lavian Week 7: Anticipation and Obviousness

4. 4 Liability ≈ Validity & Infringement In ANY IP case (copyright, trademark, trade secret), the liability questions are: IS IT VALID? IS IT INFRINGED? The “it” is will vary, of course. What makes an “it” valid is different, too. So: What is the “it” in a patent case? PatentEng-Berkeley-Lavian Week 7: Anticipation and Obviousness

5. PatentEng-Berkeley-Lavian Week 7: Anticipation and Obviousness 5 Obviousness A patent may not be obtained 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 The invention must provide one or more NEW and UNEXPECTED results The obviousness standard prevents the patenting of relatively insignificant differences between the invention and the prior art Credit given to Professor Roberta J. Morris, of Stanford University Law School, for much of the information

6. PatentEng-Berkeley-Lavian Week 7: Anticipation and Obviousness 6 Obviousness (cont’d) Prior art can be combined in an obviousness determination, that is, more than one reference can be cited by the examiner as showing different features of the invention which, taken together, render the invention obvious Obviousness is inherently a subjective determination, as the examiner cannot be, or know the mind of, the hypothetical “one skilled in the art.” Credit given to Professor Roberta J. Morris, of Stanford University Law School, for much of the information

7. 7 Depends on what is in the PRIOR ART. How do those 2 differ? 1.HOW MUCH ART? 2.What other things matter, besides the art and what it DISCLOSES? Anticipation and Obviousness PatentEng-Berkeley-Lavian Week 7: Anticipation and Obviousness

8. 8 Anticipation and Obviousness 1. How much art? Anticipation: A single piece of prior art is ON ALL parts. The claim READS ON this single reference. Obviousness: Usually more than one reference, but could be one reference PLUS the knowledge of the “person of ordinary skill in the art” PatentEng-Berkeley-Lavian Week 7: Anticipation and Obviousness

9. THE PRIOR ART SEARCH A thorough search should also include both patent and non-patent references such as journals and other publications. The Internet is an excellent source for prior art information. A patent search is not an infringement search. PatentEng-Berkeley-Lavian 9

10. Week 7: Anticipation and Obviousness THE PRIOR ART SEARCH (cont’d) A patent search is a search of public patent records of at least the U. S. Patent Office for disclosures pertinent to the patentability of the invention. The search can be conducted in Washington in the search room of the U. S. Patent Office, or by means of electronic databases (such as the patent database available at www.uspto.gov). PatentEng-Berkeley-Lavian 10

11. Nonobvious to Whom? A patent will NOT be issued if a person having ordinary skill in the field of the invention would consider the invention obvious at the time of creation The law considers a person having ordinary skill in the art to be a worker in the field of the invention who: –Has ordinary skill –Is totally knowledgeable about all the prior art in his or her field Pure Fantasy, but no other realistic way to determine nonobviousness –The PTO creates a hypothetical person and tries to weigh the obviousness of the invention against the knowledge this hypothetical person would possess PatentEng-Berkeley-Lavian Week 7: Anticipation and Obviousness 11 Credit given to Attorneys David Pressman & Richard Stim, Nolo’s Patents for Beginners, for much of the information

12. 12 Anticipation and Obviousness 2. What else matters besides ? Anticipation: NOTHING. Except that the single piece of Prior Art must ENABLE at least as well as the patent does. Obviousness: LOTS. The PRIMARY CONSIDERATIONS. (really not much beyond the p.a., but there’s a formula for them, from the statute and from court decisions) The SECONDARY CONSIDERATIONS Guess which one Accused Infringers prefer to use to challenge a patent? What about Patent Owners? PatentEng-Berkeley-Lavian Week 7: Anticipation and Obviousness

13. 13 SECONDARY CONSIDERATIONS (1)The invention's commercial success (2) Long felt but unresolved needs (3) The previous failure of others (4) Skepticism by experts (5) Praise by others (6) Teaching away by others (7) Solves an unrecognized problem (8) Solves an insoluble problem (9) Copying of the invention by competitors (10) Omission of Element (11) Crowded Art (12) Not suggested Modification (13) Unappreciated Advantage Guess which one Accused Infringers prefer to use to challenge a patent? What about Patent Owners? PatentEng-Berkeley-Lavian Week 7: Anticipation and Obviousness

14. 14 Combination Inventions Inventions that combine two or more elements already known in prior art can still be patentable, provided the combination is nonobvious: (1)Synergism (2 + 2 = 5) (2)Combination Unsuggested (3)Impossible to Combine (4)Different Combination (5)Prior-Art References Would Not Operate in Combination (6)References from a Different Field Credit given to Attorneys David Pressman & Richard Stim, Nolo’s Patents for Beginners, for much of the information PatentEng-Berkeley-Lavian Week 7: Anticipation and Obviousness

15. Examples of Obviousness Nonobvious: Slight Physical Changes – Dramatic Result –Sometimes, a very slight change in shape, slope, size, or material can produce a patentable invention that operates entirely differently and produces totally unexpected results Nonobvious: New Use Inventions –Do not involve any physical change to old invention –Must be different use of known product or process and produce new, unexpected results Obvious: Different Element, Similar Function –Courts have held that substituting a different, but similarly functioning, element for one of the elements in a known combination creates a novel invention but an obvious one. PatentEng-Berkeley-Lavian Week 7: Anticipation and Obviousness 15 Credit given to Attorneys David Pressman & Richard Stim, Nolo’s Patents for Beginners, for much of the information

16. Examples of Obviousness Obvious: Old Concept, New Form –The PTO will consider as obvious the mere carrying forward of an old concept, or a change in form and degree, without a new result (notches on inner rim of steering wheel for better grip, obvious because of medieval sword handles) Obvious: Duplication of Parts –Usually consider the duplication of a part as obvious unless new results can be observed Obvious: Portability, Size, Speed, and Integration –Making devices portable, making parts smaller or larger, faster or slower, making elements adjustable, parts integral, separable, etc. will be considered obvious unless new, unexpected results can be shown. PatentEng-Berkeley-Lavian Week 7: Anticipation and Obviousness 16 Credit given to Attorneys David Pressman & Richard Stim, Nolo’s Patents for Beginners, for much of the information