When does two different publications make an invention obvious?

When does two different publications make an invention obvious?

When an inventor creates an invention the inventor can protect their invention with a patent.  A patent is a set of exclusive rights granted, by a government, to the inventor of an invention.  To get a patent in the United States an inventor must file a patent application with the United States Patent and Trademark Office.  The United State Patent and Trademark Office reviews patent applications and grants a patent if the invention meets several requirements.  A patent application must demonstrate that an invention is new, useful and not obvious for a patent to be granted.  If an inventor is granted a patent they are granted the exclusive right to make, use, sell and import the invention in the United States.  If some one other than the owner of a patent attempts to exercise one of these rights, that can be considered patent infringement.

Even after a patent is granted, it is not immune from attack.  If someone believes that a patent was granted in error they can file a request for an inter partes review with the Patent Trial and Appeal Board.  Inter partes review is a trial proceeding conducted at the Patent Trial and Appeal Board to review the patentability of one or more claims in a patent only on a ground that could be raised under §§ 102 or 103 of United States patent law, and only on the basis of prior art consisting of patents or printed publications.

An inter partes review is frequently initiated by someone accused of patent infringement after the patent owner contacts them.  Inter partes review is faster than challenging a patent in a court and is typically less expensive.  However, the evidence that must be presented in an inter partes review is not less fact intensive than a court trial.

To successfully invalidate a patent in an inter partes review the challenger must show that the invention was disclosed prior to the patent application filing or that the invention was obvious.  Whether or not an invention is obvious can be a tricky thing to prove.  It is human nature to use hindsight to analyze whether something was obvious or not.  To remove hindsight from an obviousness analysis there are detailed rules on what evidence can be considered.  First, prior art must be introduced.  Prior art is a publicly available printed publication that describes the features of an invention. Next, the perspective of a person of ordinary skill in the art must be considered.  A person of ordinary skill in the art is an average person who is familiar with the technology related to the invention.  A patent will be invalidated if a person of ordinary skill in the art, in light of the prior art, would consider an invention obvious.

Frequently, no single piece of prior art will disclose all the features of the invention.  The question then becomes when does multiple pieces of prior art make an invention obvious?

A case which illustrates when multiple pieces of prior art do not make an invention obvious is HAMILTON BEACH BRANDS, INC., v. F’REAL FOODS, LLC, 2018-1274 (C.A.F.C. 2018).  In this case F’Real is the owner of  of U.S. Patent No. 7,520,662, entitled “Rinseable splash shield and method of use.”   The invention is a mixing machine which can be cleaned without disassembling the machine.  F’Real accused Hamilton of patent infringement.  Hamilton responded with an inter partes review to try to invalidate F’Real’s patent.

Hamilton submitted several patents, which are considered prior art, as evidence that the F’Real patent was obvious. When combined the prior art disclosed all the aspects of the F’Real patent.  The Patent Trial and Appeal Board held that there was no motivation for a person having ordinary skill in the art to combine the different pieces of prior art, therefore the F’Real patent was not obvious.  Hamilton appealed to the Court of Appeals for the Federal Circuit.

The Federal Circuit upheld the Patent Trial and Appeal Board’s decision.  The Federal Circuit held that Hamilton did not persuasively establish a motivation to combine the prior art.  The prior art did not identify a reason why
a person of ordinary skill in the art would have been motivated to combine those limitations.  Hamilton also did not offer evidence that a person of ordinary skill in the art would have been motivated to combine the prior art.

Stated simply, evidence a person of ordinary skill in the art would be motivated to combine several pieces is necessary to render an invention obvious.

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