Patent Law

Obviously Flowing

By Gary Odom and Jordan Kuhn

Tokyo Keiso tried pipe-hitting SMC for infringing 5,485,004, claiming a pipe volume flow meter. Figuring Obzilla would take the "predictable next step", the district court found "the '004 patent obvious as a matter of law." No argument from the CAFC on that. After all, if the prior art isn't teaching away, it's teaching the way. Obzilla knows all the dance steps, that nimble lug. It didn't help that the "patent specification concedes as prior art most of the limitations of claims." Not much flow there.

Tokyo Keiso v. SMC and Chronotek Systems (CAFC 2008-1045, -1112) non-precedential

SMC found two references, a patent (Urmson) and a publication (Lynnworth), "within the same field of endeavor."

According to the court, both references would have fairly suggested the same structure and function as the '004 patent, including slowing down the interfering signal, and neither teaches away from slowing down the signal. The court also reasoned that, because the PTO considered neither Urmson nor Lynnworth during prosecution, the presumption of validity was also much diminished.

One claim went to a special plastic. So what.

Thus, according to the court, the '004 patent's use of the best type of plastic was a predictable next step to the prior art.

Likewise a change in configuration.

The court also found that the '004 patent's use of a straight tube with measuring heads attached to each side, instead of angularly clamped onto the tube as in the Lynnworth article, was a predictable next step, and Lynnworth did not teach away from the claimed invention.

Case law capsule of facts leading to legal ruling -

"The ultimate judgment of obviousness is a legal determination. Where . . . the content of the prior art, the scope of the patent claim, and the level of ordinary skill in the art are not in material dispute, and the obviousness of the claim is apparent in light of these factors, summary judgment is appropriate." KSR v. Teleflex, 127 S. Ct. 1727, 1745-46 (2007).

Silence is golden when it comes to describing the prior art in a patent application.

"Valid prior art may be created by the admissions of the parties. . . . [A] statement by an applicant during prosecution identifying certain matter not the work of the inventor as 'prior art' is an admission that the matter is prior art." Riverwood Int'l Corp. v. R.A. Jones & Co., 324 F.3d 1346, 1354 (Fed. Cir. 2003) (citations omitted); see also Constant v. Advanced Micro-Devices Inc., 848 F.2d 1560, 1570 (Fed. Cir. 1988) ("A statement in a patent that something is in the prior art is binding on the applicant and patentee for determinations of anticipation and obviousness.").

Lynnworth discloses all of the aspects of claims 1, 2, and 5 that are not admittedly prior art.

Obzilla is one motivated creature.

"When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability." KSR, 127 S. Ct. at 1740.

Affirmed.

Full post as published by The Patent Prospector on January 09, 2009 (boomark / email).