Many of my recent articles have focused upon the whether an innovation is eligible for patent protection. This has been described as a Section 101 issue. Many innovations have been barred from patenting as being merely abstract ideas. This is a confused area. However, even if an innovation is deemed patentable subject matter, it still needs to be novel (Section 102) or a “non-obvious” improvement over the prior art (Section 103). Whether an innovation is non-obvious is viewed through the eyes of a person skilled in the relevant technology. This article looks at design choice and obviousness. I believe this is also a confused area since the Supreme Court allowed subjective judgements of “common sense” to be part of the criteria for determining obviousness. See my earlier discussion including “Overcoming an Obviousness Rejection” See also 103 Obvious Rejections II, Section 103 Obvious Rejections, and Non-analogous Art Can’t be Obvious.
Recently, the Court of Appeals for the Federal Circuit (“Federal Circuit”) has decided two cases regarding whether an innovation was patentably non-obvious or merely an unpatentable “design choice” to a person skilled in the art. The Court has looked to whether the options faced by the skilled artisan were “finite” and previously disclosed in prior art pertaining to the same problem subject of the innovation. In such instances, it has been determined to be a mere design choice and not a patentable innovation.
What is relevant to an innovator is the need to consider how his/her innovation or invention relates to the prior art. This requires an understanding of both the invention and the prior art. This can require a prior art search.
Note that deferring action for IP protection upon conduct of a patent search and follow-on analysis is admittedly in tension is my own advocacy of prompt filing provisional applications for patent. Hence my encouragement is to promptly file expansive and enabling descriptions of what you believe to be your innovation as a provisional application for patent, then conduct your prior art search, combined with efforts to understand whether there is a market for your innovation. See my articles Filing Provisional Patent Applications and DIY Provisional Applications.
Combination of techniques that would be “obvious to try” or “common sense” to a person skilled in the art do not constitute a patentable invention but rather an obvious modification of known products or methods. However it is acknowledged that everything is obvious once disclosed. Hindsight is 20:20. Therefore the courts have been clear that hindsight analysis can not be used to determine whether a modification is obvious versus a patentable innovation.
Prior to the 2007 decision of KSR vs Teleflex, 550 U.S. 398 (2007) the courts looked to whether there was demonstrable evidence in the prior art of a suggestion or motivation to make the combination of prior art references. This was an effort to establish an objective test. The Supreme Courts decision in KSR introduced “common sense” as an element of obviousness. But what is common sense? It is a subjective determination. It is acknowledged that every patentable innovation builds upon elements already known (prior art). But is the change or combination a patentable innovation? Hard to tell. It is subjective. Differing shades of gray. Where is the line between common sense/obvious to try and innovative? This is the morass created by the Justice Kennedy in writing the Supreme Court opinion in KSR.
Uber Technologies Decision
One issue created is when is the claimed innovation in fact an obvious combination of known elements of prior art. This was addressed in May 2020 by the Federal Circuit in Uber Technologies Inc v. X One Inc., 2019-1164 (Fed. Cir. 2020). At issue was whether the combination of known elements was patentably innovative or merely a design choice obvious to a person skilled in the art.
The technology involved was computerized tracking of the location of persons or objects utilizing mobile devices. X One Inc. had been issued a patent by the USPTO. Uber Technologies filed an Inter Partes Review of the patent award. The review was conducted by the Patent Trial and Appeals Board (PTAB) See my prior article on Inter Partes Review. At issue was whether the subject matter of the issued patent was in fact obvious in view of two published Japanese patent applications. (Although technically prior art, these appear to me to be rather obscure and not likely to be located in a low budget prior art search.)
Like the patent issued to X One Inc. the obscure prior art generally described transmitting location information between mobile devices including embodiments that can be used to show the locations of friends or vehicles. The users could form groups that allow each group member to see the locations of all other group members and themselves plotted on a map.
The parties’ dispute arises from the claim limitation “software responsive to a request from the first individual to obtain a map, to obtain a last known position for multiple users identified by the buddy list, and to plot the last known location of at least two of the multiple users on the map, and to transmit the map with plotted locations to the first individual.” This limitation requires a server to first plot certain known locations on a map, and then, only after plotting, to “transmit the map with plotted locations” to a user’s mobile device. It is undisputed that one of the Japanese published patent applications disclose such “server-side” plotting.
Thus the issue was narrow, i.e., whether it would be an obvious design choice to have the plotting to occur at the “server side” prior to transmitting to the user’s mobile device or have the plotting occur at the “terminal side”, i.e., at the mobile device. X One Inc. required the plotting of information to occur at the terminal side.
The PTAB decision asserted it would be “impermissible hindsight” or “wholesale modification” of one prior art reference to equate the server-side location plotting obvious in view of location plotting to occur at the user’s mobile device as claimed by X One Inc.
On appeal, the Federal Circuit explicitly referenced the Supreme Court KSR decision of “‘an expansive and flexible approach’ to ‘the question of obviousness’” Hence the rub. The Federal Circuit considered “design choice”, “predictable results” and “obvious to try” as obvious and therefore precluding patentability. Further the Court considered the disclosures were directed to the same problem (and therefore not “non-analogous” art). In other words, both Japanese published patent application references were “helping one user view and track the location of other users”.
Therefore, the Federal Circuit over ruled the PTAB and stated “Accordingly, server-side plotting and terminal-side plotting represent ‘a finite number of identified, predictable solutions’ to a design need that existed at the relevant time, which a person of ordinary skill in the art ‘ha[d] good reason to pursue.’” Thus the X-One patent was obvious in view of the published but non-examined Japanese patent applications. In other words, it was a design choice to have the plotting of member’s location occur on either the server-side or the terminal-side. There were no other options and therefore the choice was finite.
In a subsequent and very recent case, the Federal Circuit determined a combination of known techniques was not an obvious combination. In FanDuel, Inc. v. Interactive Games LLC, 2019-1393 (Fed. Cir. 2020), the Federal Circuit again reviewed a PTAB decision of an Inter Partes Review. The Federal Circuit on July 29, 2020, upheld the decision of the PTAB, finding that there was a “gap” in the teaching of the prior art references.
The FanDuel decision pertained to remote gambling. Interactive Games had been issued a patent. FanDuel argued the patent was invalid since the claimed innovation was obvious based upon prior art. The issue was narrowed to whether the combination of the three cited references rendered obvious the limitations of a single claim of the Interactive Games patent of determining the “game configuration” by “accessing a lookup table which contains an ordered list of locations and associated game configurations.”
The Federal Circuit determined that the prior art taught the general use of look-up tables. But the patent challenger failed to meet its burden to show that a person skilled in the art would be motivated to add a look-up table to correlate location information with game configurations. The Federal Circuit affirmed the Board’s finding that a “gap” existed between the concept of a look-up table being well known and the beneficial application of that concept to one of the prior art references. Therefore the patentee’s innovation was not obvious. It was not sufficient to call the addition of a look-up table to with location information as obvious design choice. It appears the Court also did not find a motivation to combine the concepts.
It must be noted that there was a dissenting opinion within the Federal Circuit panel of three justices. The dissent cited the apparent agreement of the majority that look-up tables and ordered lists were well known design choices but the dissent disagreed that these facts were insufficient motivation to combine. The dissent cited KSR that a combination of familiar elements according to known methods is likely to be obvious when it does not more than yield predictable results. The dissent cited the Federal Circuit decision of Uber discussed above.
First, this is a lesson that an obscure but published references, whether a foreign published patent application or foreign technical journal, can be very relevant to the issue of patentability, whether novelty (Section 102) or obviousness (Section 103).
Second and perhaps more importantly, prior art references can be used to show that the choices faced by a person skilled in the art may be limited and therefore obvious to try or constitute merely design choices, contrary to an innovative choice or development.
Third, this area is highly nuanced and subtle. What is patentable is subjective.
HOWEVER, it is not a lesson against prompt filing of provisional applications. I continue to encourage innovators to drive their stake into the ground and claim their innovation. This is can be accomplished at minimal cost. Then perform your prior art search and/or Internet search of competitors while at the same time looking for market interest and evaluating further refinement of your innovation. Possible adverse news does not justify doing nothing.
© David McEwing 2020