Transfer of Venue

IN RE LINK_A_MEDIA DEVICES CORP. [ORDER]

• Writ of mandamus granted and district court ordered to transfer case.


• "[T]he district court placed far too much weight on the plaintiff’s choice of forum.... When a plaintiff brings its charges in a venue that is not its home forum ... that choice of forum is entitled to less deference."


• "Neither § 1404 nor [3rd Circuit case] list a party’s state of incorporation as a factor for a venue inquiry. It is certainly not a dispositive fact in the venue transfer analysis, as the district court in this case seemed to believe."


• "While advances in technology may alter the weight given to these factors [the convenience of the witnesses and the location of the books and records], it is improper to ignore them entirely."




• For similar cases, see In Re Hoffmann-La Roche Inc., 587 F.3d 1333 (Fed. Cir. 2009); In re Genentech, Inc., 566 F.3d 1338 (Fed. Cir. 2009); and In re TS Tech USA Corp., 551 .3d 1315, 1322 (Fed. Cir. 2008).

Prior Invention Under 102(g)(2)

TEVA PHARMACEUTICALS INDUSTRIES LTD. V. ASTRAZENECA PHARMACEUTICALS LP

• Prior invention under 102(g)(2) can be established by showing that the invention was first reduced to practice by another or that the invention was first conceived by another who then exercised reasonable diligence in reducing that invention to practice.




• Dow, Mycogen Plant Sciences, and Invitrogen are consistent applications of the same rule. To establish prior invention, the party asserting it must prove that it appreciated what it had made. The prior inventor does not need to know everything about how or why its invention worked. Nor must it conceive of its invention using the same words as the patentee would later use to claim it.

Injunction/Irreparable Harm

ROBERT BOSCH LLC. V. PYLON MANUFACTURING CORP.

• We take this opportunity to put the question to rest and confirm that eBay jettisoned the presumption of irreparable harm as it applies to determining the appropriateness of injunctive relief. In so holding, we join at least two of our sister circuits that have reached the same conclusion as it relates to a similar presumption in copy-right infringement matters.


• Although eBay abolishes our general rule that an in-junction normally will issue when a patent is found to have been valid and infringed, it does not swing the pendulum in the opposite direction. In other words, even though a successful patent infringement plaintiff can no longer rely on presumptions or other short-cuts to support a request for a permanent injunction, it does not follow that courts should entirely ignore the fundamental nature of patents as property rights granting the owner the right to exclude.


• [W]ithout additional facts showing that the presence of additional competitors renders the infringer’s harm reparable, the absence of a two-supplier market does not weigh against a finding of irreparable harm.


• Injuries that affect a “non-core” aspect of a patentee’s business are equally capable of being irreparable as ones that affect more significant operations.


• A district court should assess whether a damage remedy is a meaningful one in light of the financial condition of the infringer before the alternative of money damages can be deemed adequate. While competitive harms theoretically can be offset by monetary payments in certain circumstances, the likely availability of those monetary payments helps define the circumstances in which this is so.

• A party cannot escape an injunction simply because it is smaller than the patentee or because its primary product is an infringing one.

APPLE. INC. V. SAMSUNG ELECTRONICS CO., LTD

• (Nexus between infringement and irreparable harm.) We hold that the district court was correct to require a showing of some causal nexus between infringement and the alleged harm to [the patentee] as part of the showing of irreparable harm. To show irreparable harm, it is necessary to show that the infringement caused harm in the first place. Sales lost to an infringing product cannot irreparably harm a patentee if consumers buy that product for reasons other than the patented feature. If the patented feature does not drive the demand for the product, sales would be lost even if the offending feature were absent from the accused product. Thus, a likelihood of irreparable harm cannot be shown if sales would be lost regardless of the infringing conduct.

• (Nexus between infringement and irreparable harm.) While the evidence that [the accused infringer's] employees believed it to be important to incorporate the patented feature into [its] products is certainly relevant to the issue of nexus between the patent and market harm, it is not dispositive. That is because the relevant inquiry focuses on the objective reasons as to why the patentee lost sales, not on the infringer’s subjective beliefs as to why it gained them (or would be likely to gain them). 
• (Delay in bringing suit and irreparable ham.) [I]t was reasonable for the district court to consider the issue of delay and to find that [the patentee] had not proceeded as quickly as it could have in seeking preliminary injunctive relief. The district court correctly noted that delay in bringing an infringement action and seeking a preliminary injunction are factors that could suggest that the patentee is not irreparably harmed by the infringement. 

Intervening Rights

MARINE POLYMER TECHNOLOGIES, INC. V. HEMCON, INC.

• The doctrine of absolute intervening rights protects an accused infringer’s right to continue using, selling, or offering to sell specific products covered by reissued or reexamined claims when the particular accused product had been made before the date of the reissue or reexamination and the scope of the claims is substantively changed.
  
• The doctrine of equitable intervening rights protects an accused infringer’s ability to make, sell, offer to sell, or use particular items of the same type that the accused infringer had made, purchased, or used before the reexamination even if the particular item was produced thereafter. It also protects a newly created product that was not of a type produced before the reexamination if the accused infringer made “substantial preparations” for manufacture of the product before the reissue or reexamination.

Unpatentable Subject Matter (abstract ideas)

Mayo v. Prometheus

• To put the matter more succinctly, the claims inform a relevant audience about certain laws of nature; any additional steps consist of well­understood, routine, conventional activity already engaged in by the scientific community; and those steps, when viewed as a whole, add nothing significant beyond the sum of their parts taken separately.  For these reasons we believe that the steps are not sufficient to transform unpatentable natural correlations into patentable applications of those regularities.

• [T]o transform an unpatentable law of nature into a patent-eligible application of such a law, one must do more than simply state the law of nature while adding the words “apply it.”
• The question before us is whether the claims do significantly more than simply describe these natural relations. To put the matter more precisely, do the patent claims add enough to their statements of the correlations to allow the processes they describe to qualify as patent-eligible processes that apply natural laws?
• If a law of nature is not patentable, then neither is a process reciting a law of nature, unless that process has additional features that provide practical assurance that the process is more than a drafting effort designed to monopolize the law of nature itself.

CLS BANK v. ALICE CORP.

• The abstractness of the “abstract ideas” test to patent eligibility has become a serious problem, leading to great uncertainty and to the devaluing of inventions of practical utility and economic potential.

• Notwithstanding these well intentioned efforts and the great volume of pages in the Federal Reporters treating the abstract ideas exception, the dividing line between inventions that are directed to patent ineligible abstract ideas and those that are not remains elusive.

• While every inventor is granted the right to exclude, or “pre-empt,” others from practicing his or her claimed invention, no one is entitled to claim an exclusive right to a fundamental truth or disembodied concept that would foreclose  every future innovation in that art.

• [T]he essential concern is not preemption, per se, but the extent to which preemption results in the foreclosure of innovation.  Claims that are directed to no more than a fundamental truth and foreclose, rather than foster, future innovation are not directed to patent eligible subject matter under § 101.  No one can claim the exclusive right to all future inventions.

• The mere implementation on a computer of an otherwise ineligible abstract idea will not render the asserted “invention” patent eligible. 

• It can ... be appreciated that a claim that is drawn to a specific way of doing something with a computer is likely to be patent eligible whereas a claim to nothing more than the idea of doing that thing on a computer may not.

• But even with that appreciation, great uncertainty remains, and the core of that uncertainty is the meaning of the “abstract ideas” exception.

• Any claim can be stripped down, or simplified, removing all of its concrete limitations, until at its core, something that could be characterized as an abstract idea is revealed.  But nothing in the Supreme Court’s precedent, nor in ours, allows a court to go hunting for abstractions by ignoring the concrete, palpable, tangible, and otherwise not abstract invention the patentee actually claims.  It is fundamentally improper to paraphrase a claim in overly simplistic generalities in assessing whether the claim falls under the limited “abstract ideas” exception to patent eligibility under 35 U.S.C. § 101.  Patent eligibility must be evaluated based on what the claims recite, not merely on the ideas upon which they are premised. 

• In light of the foregoing, this court holds that when—after taking all of the claim recitations into consideration—it is not manifestly evident that a claim is directed to a patent ineligible abstract idea, that claim must not be deemed for that reason to be inadequate under § 101.

• Unless the single most reasonable understanding is that a claim is directed to nothing more than a fundamental truth or disembodied concept, with no limitations in the claim attaching that idea to a specific application, it is inappropriate to hold that the claim is directed to a patent ineligible “abstract idea” under 35 U.S.C. § 101.

CLASSEN IMMUNOTHERAPIES, INC. V. BIOGEN IDEC

• Methods that simply collect and compare data, without applying the data in a step of the overall method, may fail to traverse the §101 filter.


• The ’283 claims do not include putting this knowledge to practical use, but are directed to the abstract principle that variation in immunization schedules may have consequences for certain diseases. In contrast, the claims of the ’139 and ’739 patents require the further act of immunization in accordance with a lower-risk schedule, thus moving from abstract scientific principle to specific application.

FORT PROPERTIES, INC. V. AMERICAN MASTER LEASE LLC.

• The computer limitation [in this case] … does not play a significant part in permitting the claimed method to be performed. … At the claim construction stage, AML agreed that “using a computer” merely meant “operating an electronic device that features a central processing unit.” Such a broad and general limitation does not impose meaningful limits on the claim’s scope. AML simply added a computer limitation to claims covering an abstract concept—that is, the computer limitation is simply insignificant post-solution activity.

Offer For Sale

AUGUST TECH CORP v. CAMTEK LTD

• Section 102(b) requires that “the invention was . . . on sale in this country” before the critical date. The Supreme Court has explained that the § 102(b) on-sale bar applies when two conditions are met before the critical date: (1) the product is the subject of a commercial offer for sale, and (2) the invention is ready for patenting. Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 67 (1998).




• The issue presented in this case is whether the invention must be ready for patenting at the time the alleged offer is made. We conclude that it does not.
  


• While the invention need not be ready for patenting at the time of the offer, consistent with our cases, we hold that there is no offer for sale until such time as the invention is conceived.


• Therefore, we conclude that an invention cannot be offered for sale until its conception date. Hence, if an offer for sale is made and retracted prior to conception, there has been no offer for sale of the invention. In contrast, if an offer for sale is extended and remains open, a subsequent conception will cause it to become an offer for sale of the invention as of the conception date. In such a case, the seller is offering to sell the invention once he has conceived of it. Before that time, he was merely offering to sell an idea for a product.

Unpatentable Subject Matter (mental processes)

CYBERSOURCE CORP. V. RETAIL DECISIONS, INC.

• Mental processes are not patent-eligible subject matter because the application of only human intelligence to the solution of practical problems is no more than a claim to a fundamental principle.


• It is clear that unpatentable mental processes are the subject matter of claim 3. All of claim 3’s method steps can be performed in the human mind, or by a human using a pen and paper. Claim 3 does not limit its scope to any particular fraud detection algorithm, and no algorithms are disclosed in the … specification.


• Such a method that can be performed by human thought alone is merely an abstract idea and is not patent-eligible under § 101. Methods which can be performed entirely in the human mind are unpatentable not because there is anything wrong with claiming mental method steps as part of a process containing non-mental steps but rather because computational methods which can be performed entirely in the human mind are the types of methods that embody the basic tools of scientific and technological work that are free to all men and reserved exclusively to none.


• We have never suggested that simply reciting the use of a computer to execute an algorithm that can be per-formed entirely in the human mind falls within the Alappat rule.


• We agree with the district court that the claimed process manipulates data to organize it in a logical way such that additional fraud tests may be performed. The mere manipulation or reorganization of data, however, does not satisfy the transformation prong.


• As we stated in Bilski, to impart patent-eligibility to an otherwise unpatentable process under the theory that the process is linked to a machine, the use of the machine must impose meaningful limits on the claim’s scope. In other words, the machine must play a significant part in permitting the claimed method to be performed. Here, the incidental use of a computer to perform the mental process of claim 3 does not impose a sufficiently meaningful limit on the claim’s scope.


• [M]erely claiming a software implementation of a purely mental process that could otherwise be performed without the use of a computer does not satisfy the machine prong of the machine-or-transformation test.

Bancorp Services v. Sun Life Assurance

• To salvage an otherwise patent-ineligible process, a computer must be integral to the claimed invention, facilitating the process in a way that a person making calculations or computations could not.
• Using a computer to accelerate an ineligible mental process does not make that process patent-eligible.

Parsing Therasense v. Becton

When it comes to undisclosed prior art, the Federal Circuit’s new standard outlined in THERASENSE, INC. V. BECTON, DICKINSON AND CO. for inequitable conduct, which was and intended to diminish the importance of inequitable conduct as a defense, is logically flawed. The standard for intent is, taken on its face, not possible to establish. To show the required intent, a defendant must convince a district court to “make a specific finding [that the inventors] knew that withheld information was material and [that] they made a deliberate decision to withhold it.” (See AMERICAN CALCAR, INC. V. AMERICAN HONDA MOTOR CO., INC. at p. 27.) This seems like a pretty rigorous standard to meet by clear and convincing evidence, but it is at some level impossible. It must be shown that an inventor knew—at the time he decided not to disclose a prior art reference—that the prior art reference was material. But the Federal Circuit also redefined “material,” which now must be (usually) “but-for” materiality: “prior art is but-for material if the PTO would not have allowed a claim had it been aware of the undisclosed prior art.” (Therasense, p. 27; see also pp. 27-28 (“[I]n assessing the materiality of a withheld reference, the court must determine whether the PTO would have allowed the claim if it had been aware of the undisclosed reference. In making this patentability determination, the court should apply the preponderance of the evidence standard and give claims their broadest reasonable construction.”).) Accordingly, a defendant must show that during prosecution an inventor knew of a prior art reference, knew that disclosing it would result in claims not being allowed, and made a deliberate decision to withhold it.





The problem, of course, is that one cannot know what the PTO is going to do with any particular piece of prior art ahead of time. Inventors and practitioners may have opinions about how they think the PTO will respond to a particular prior art reference, but they can never know. What the Federal Circuit likely meant, and how this standard will probably be applied in practice, is that to meet the intent standard it must be shown that an inventor believed (subjectively, one would presume) that a prior art reference would have resulted in claims not being allowed had the examiner known of it and deliberately decided to withhold it for that reason. Since this standard relies on the subjective view of the person(s) accused of inequitable conduct, it will be exceedingly difficult to establish.

Invalidity (Burden of Proof)

CREATIVE COMPOUNDs, LLC. .V STARMARK LABORATORIES

• "[W]e now hold that an accused infringer cannot obtain the benefit of the lower burden of proof that prevails in an interference proceeding simply by alleging, as a defense to infringement, that the asserted patent is invalid based upon a co-pending patent unless common claimed subject matter is first identified and an adjudication of priority is sought."

Derivation Defense

CREATIVE COMPOUNDs, LLC. .V STARMARK LABORATORIES

• In order to establish derivation, Creative was required to “prove both prior conception of the invention by another and communication of that conception to the patentee.” Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 1334 (Fed. Cir. 2003).

Enhanced Damages

SPECTRALYTICS, INC. V. CORDIS CORP.

• "Seagate removed the presumption of willful infringement flowing from an infringer’s failure to exercise due care to avoid infringement, but Seagate did not change the application of the Read factors with respect to enhancement of damages when willful infringement under §285 is found. We thus vacate the district court’s denial of enhanced damages, and remand to the district court to redetermine whether enhanced damages are warranted under the guidance of Read, 970 F.2d at 826, that the 'paramount determination in deciding to grant enhancement and the amount thereof is the egregiousness of the defendant’s conduct based on all the facts and circumstances.'”

Bard Peripheral v. W.L. Gore

• We believe that the court is in the best position for making the determination of reasonableness.  This court therefore holds that the objective determination of recklessness, even though predicated on underlying mixed questions of law and fact, is best decided by the judge as a question of law subject to de novo review.

• When a defense or noninfringement theory asserted by an infringer is purely legal (e.g., claim construction), the objective recklessness of such a theory is a purely legal question to be determined by the judge. When the objective prong turns on fact questions, as related, for example, to anticipation, or on legal questions dependent on the underlying facts, as related, for example, to questions of obviousness, the judge remains the final arbiter of whether the defense was reasonable, even when the underlying fact question is sent to a jury.

• [T]he ultimate legal question of whether a reasonable person would have considered there to be a high likelihood of infringement of a valid patent should always be decided as a matter of law by the judge.

Analogous Prior Art

IN RE KLEIN

• "A reference qualifies as prior art for an obviousness determination under § 103 only when it is analogous to the claimed invention."

Induced Infringement

Global-Tech Appliances, Inc. v. SEB S. A.

• “[W]e now hold that induced infringement under §271(b) requires knowledge that the induced acts constitute patent infringement.”


• The knowledge requirement can be met by showing willful blindness.


• “While the Courts of Appeals articulate the doctrine of willful blindness in slightly different ways, all appear to agree on two basic requirements: (1) the defendant must subjectively believe that there is a high probability that a fact exists and (2) the defendant must take deliberate actions to avoid learning of that fact. We think these requirements give willful blindness an appropriately limited scope that surpasses recklessness and negligence. Under this formulation, a willfully blind defendant is one who takes deliberate actions to avoid confirming a high probability of wrongdoing and who can almost be said to have actually known the critical facts.”


• “Taken together, this evidence was more than sufficient for a jury to find that Pentalpha subjectively believed there was a high probability that SEB’s fryer was patented, that Pentalpha took deliberate steps to avoid knowing that fact, and that it therefore willfully blinded itself to the infringing nature of Sunbeam’s sales.”

Toshiba Corp. v. Imation Corp.

• "The existence of a substantial non-infringing use does not preclude a finding of inducement." (See Contributory Infringement.)

Mirror Worlds v. Apple

• "It is not disputed that the [accused] products could infringe.  However, such testimony alone is not sufficient to find inducement of infringement of a method patent.  Evidence of actual use of each limitation is required."

Attorney Fees Under Section 285

OLD RELIABLE WHOLESALE, INC. V. CORNELL CORP.

• “Absent misconduct in conduct of the litigation or in securing the patent, sanctions may be imposed against the patentee only if both (1) the litigation is brought in subjective bad faith, and (2) the litigation is objectively baseless.”


• “The standard for establishing that a claim is ‘objectively baseless’ under section 285 is identical to the objective recklessness standard for enhanced damages and attorneys’ fees against an accused infringer for § 284 willful infringement actions under In re Seagate Technology, LLC, 497 F.3d 1360 (Fed. Cir. 2007). Thus, ‘objective baselessness’ depends not on the state of mind of the party against whom fees are sought, but instead on an objective assessment of the merits of the challenged claims and defenses.”


• “Unless an argument or claim asserted in the course of litigation is so unreasonable that no reasonable litigant could believe it would succeed, it cannot be deemed objectively baseless for purposes of awarding attorney fees under section 285.”

MARCTEC, LLC. V. JOHNSON & JOHNSON

• “A district court has discretion to award reasonable attorney fees to a prevailing party in a patent case if the court determines that the case is ‘exceptional.’”
  “Absent litigation misconduct or misconduct in securing the patent, a district court can award attorney fees under § 285 only if the litigation is both: (1) brought in subjective bad faith; and (2) objectively baseless.”


• “While it is clear that defeat of a litigation position, even on summary judgment, does not warrant an automatic finding that the suit was objectively baseless, here the record supports the district court’s finding that [the patentee] pursued objectively baseless infringement claims.”


• “This finding [of litigation misconduct] provides a separate and independent basis for the court’s decision to award attorney fees. Indeed, it is well-established that litigation misconduct and unprofessional behavior may suffice, by themselves, to make a case exceptional under § 285.”


• “A district court has inherent authority to impose sanctions in the form of reasonable expert fees in excess of what is provided for by statute. [Citing Takeda Chem. Indus., Ltd. v. Mylan Labs., Inc., 549 F.3d 1381, 1391 (Fed. Cir. 2008).] Use of this inherent authority is reserved for cases where the district court makes a finding of fraud or bad faith whereby the very temple of justice has been de-filed. Accordingly, not every case that qualifies as exceptional under § 285 will also qualify for sanctions under the court’s inherent power.”

False Marking

The Federal Circuit giveth, the Federal Circuit taketh away. After creating a cottage industry of qui tam suits claiming false marking a little over a year ago, the Federal Circuit has tried to stop the bleeding by holding that "Fed. R. Civ. P. Rule 9(b)’s particularity requirement applies to false marking claims under § 292." IN RE BP LUBRICANTS USA INC. [ORDER] . Granting a writ of mandamus, the court noted that:

• "[A] complaint must in the § 292 context provide some objective indication to reasonably infer that the defendant was aware that the patent expired."



• "Because the relator’s complaint here provided only generalized allegations rather than specific underlying facts from which we can reasonably infer the requisite intent, the complaint failed to meet the requirements of Rule 9(b)."

such a requirement moves the law toward, though not completely to, the proposed amendments in Congress that would allow only "a person who has suffered a competitive injury" to bring a claim for false marking.

See also JUNIPER NETWORKS, INC. V. SHIPLEY :

• “A false marking claim requires an intent to deceive the public … and sounds in fraud….”
  



• “A party alleging fraud must ‘set forth more than the neutral facts necessary to identify the transaction.’”






• “Because these policy concerns apply equally to websites as to traditional articles of manufacture or design, and because websites may both embody intellectual property and contain identifying markings, this court holds that websites can qualify as unpatented articles within the scope of § 292.”

Graham's Crackers

The first three Graham factors, the “primary” ones, are of no probative value concerning the issue of whether a claimed invention would have been obvious. They present a series of meaningless hoops to jump through for courts, parties, and juries, to the extent juries address the issue.

The Graham factors are: “[1] the scope and content of the prior art, [2] the differences between the prior art and the claims at issue, [3] the level of ordinary skill in the pertinent art, and [4] secondary considerations, otherwise known as objective indicia of nonobviousness.” Ecolab, Inc. v. FMC Corp., 569 F.3d 1335, 1349 (Fed. Cir. 2009). The first and third of these factors are decidedly neutral, since discoveries in crowded, highly skilled fields can be just as obvious or non-obvious as discoveries in sparse, low skilled fields. The level of ordinary skill in the pertinent art is inherent equivocal. A high level of skill suggests, on the one hand, that any invention should be deemed more obvious because these highly skilled folks would have been able to combine prior art references but at the same time suggests that if an invention was obvious then it should have been invented earlier by one of these highly skilled folks in the field. Concerning the scope and content of the prior art, the definition of the field of an invention is itself precarious, since an invention is necessarily new and may well span more than one “field.” Moreover, the scope and content of the prior art is subsumed into the second factor. So those two factors are meaningless. [Update: See CELSIS IN VITRO, INC. V. CELLZDIRECT, INC. in which the majority (split opinion of course) notes that the crowded field, in this case, favored a finding of nonobviousness: "As to the scope and content of the prior art, the district court correctly emphasized and found based on the preliminary record that the art was a crowded field for many years and yet there was not one reference to [an aspect of the invention at issue]."]

The second factor (differences between the invention and the prior art) seems at first blush like the key Graham factor, but it does nothing but restate the statutory definition of obviousness, which simply states that an invention is obvious if the differences between it and the prior art would have been obvious. Helpful. Indeed, this factor is neutral as well. Sometimes a small change from the prior art can result in a major breakthrough, and sometimes it can be just an incremental, obvious step taken in the ordinary course of technological development. In the case of the electric light bulb, for example, the difference between the design that was commercially viable and the prior art was very small. Thus, the three main Graham factors have little bearing on the ultimate question, which is presumably whether an invention would have been a no brainer and should not result in a term of monopoly for the person who first filed an application for a novel combination.

The last Graham factor, secondary considerations, is the only Graham factor that has any meaningful relevance for determining whether an invention was a good one. In practice, however, these are often given short shrift by the Federal Circuit and the PTO. These considerations, such as long-felt need, industry acceptance, failure of others, copying and unexpected results, all provide at least some evidence that the invention added something useful to the existing state of knowledge.

As a whole, the Graham analysis never directly seeks to determine whether the invention was the result of a good idea. Only after somehow concluding that an invention would have been “obvious” based on the first three [non-]factors does a court even turn to the most pertinent available objective evidence for that issue.

The bottom line is this: Obviousness is completely unpredictable and has been for many years. The determination is in the end at the whim of whatever three judge panel of the Federal Circuit is drawn. The test used for this “question of law” has no analytical rigor. Stripped of the façade of its boilerplate factors, it boils down to the opinion of the court. That makes obviousness both unpredictable and fundamentally unfair. It is time to toss Graham out. And until the courts can devise a legal framework that produces both fair and predictable results, obviousness should be left to juries to decide.

The Problem to be Solved Problem

“We have consistently stated that courts may find a motivation to combine prior art references in the nature of the problem to be solved, and that this form of motivation to combine evidence is particularly relevant with simpler mechanical technologies.” (Tokai v. Easton Enterprises (Fed. Cir. 2011).) An obviousness analysis that hinges on the identity of the problem solved by the invention at issue is necessarily fraught with hindsight bias. One cannot judge the worthiness of an invention by assuming the invention exists and then asking if it would have been obvious to invent that invention. That is essentially what the Federal Circuit is condoning with its reliance on the nature of the problem to be solved as the source of motivation to combine prior art references. The invention must be known before the problem to be solved can even be identified (unless the problem has not been solved, in which case there would be no invention). Often, identifying the problem to be solved is the hard part—it can be the key step on the road to invention.

What the court is saying in these problem-to-be-solved-as-motivation cases is that if in hindsight it looks like it would have been easy to combine a couple of simple mechanical devices to get the invention before the court, then no patent for you, regardless of the fact that no one else had thought to make such a combination despite the fact that the references were known and regardless of any objective indicia of non-obviousness, such as the fact that after the inventor first put the combination it became very popular. That kind of stuff won’t prevent summary judgment.

In a dissenting opinion, Judge Newman explained the problems with the current state of obviousness analysis as follows: “The determination of obviousness is not whether a person could, with full knowledge of the patented device, reproduce it from prior art or known principles. The question is whether it would have been obvious, without knowledge of the patentee’s achievement, to produce the same thing that the patentee produced. This judgment must be made without the benefit of hindsight. It is improper to take concepts from other devices and change them in light of the now-known template of the patented device, without some direction in the prior art that would render it obvious to do so.” (Tokai v. Easton Enterprises (Fed. Cir. 2011).)

Relying on the problem to be solved—the problem solved by the claimed invention—as the reason to combine references to get to that claimed invention inherently results in hindsight bias. That standard is the problem that needs to be solved.

Use of Invention

CENTILLION DATA SYSTEMS V. QWEST COMMUNICATIONS INTERNATIONAL

• We hold that to “use” a system for purposes of infringement, a party must put the invention into service, i.e., control the system as a whole and obtain benefit from it.
• We agree that direct infringement by “use” of a system claim “requires a party . . . to use each and every . . . element of a claimed [system].” In order to “put the system into service,” the end user must be using all portions of the claimed invention.
• By causing the system as a whole to perform this processing and obtaining the benefit of the result, the customer has “used” the system under § 271(a). It makes no difference that the back-end processing is physically possessed by [another party].

Transfer

IN RE MICROSOFT CORP. [ORDER]

• "A motion to transfer under § 1404(a) calls upon the trial court to weigh a number of case-specific factors relating to the convenience of the parties and witnesses, and the proper administration of justice, based on the individualized facts on record."


• "In In re Zimmer Holdings, Inc., 609 F.3d 1378 (Fed. Cir. 2010), we held that the transfer of documents to a com-pany’s offices in anticipation of litigation rather than to litigation counsel was a distinction without a difference for purposes of a § 1404(a) analysis. Id. at 1381. We further explained that, similar to Allvoice’s offices here, the offices in Zimmer staffed no employees, were recent, ephemeral, and a construct for litigation and appeared to exist for no other purpose than to manipulate venue. Id. The only added wrinkle is that Allvoice took the extra step of incorporating under the laws of Texas sixteen days before filing suit. But that effort is no more meaningful, and no less in anticipation of litigation, than the others we reject."
• Granting petition for a writ of mandamus and ordering transfer. See also In re Nintendo Co., 589 F.3d 1194 (Fed. Cir. 2009); In re Hoff-mann-La Roche Inc., 587 F.3d 1333 (Fed. Cir. 2009); In re Genentech, Inc., 566 F.3d 1338 (Fed. Cir. 2009); In re TS Tech USA Corp., 551 F.3d 1315 (Fed. Cir. 2008).