Prefacing Note on Intellectual Property Tests and Standards (Part 3 of 4)

Since the standards and tests for anticipation and obviousness are different for design patents and utility patents, we have devoted this post to discussion of anticipation and obviousness of utility patents.  The next blog will focus on the standards for anticipation and obviousness of design patents.

To prove anticipation of a utility patent (like the ‘381), a defendant must demonstrate that one single prior art reference discloses every element of at least one claim; if one single prior art reference discloses every element of a claim, then that claim is invalid because it has been anticipated by the prior art and is not novel.   If this test seems familiar to you, then you are right.  Under patent law, the tests for anticipation and infringement are the same.  The only difference is that an anticipatory reference has an earlier date of invention than the patent, whereas infringement involves an accused device that has a later date of invention than the patent.  In the anticipation analysis, courts compare the anticipatory reference to the patent claim.  For infringement, courts compare the patent claim with the accused device. See, Court Order Denying Motion for Preliminary Injunction at 18.

A challenge on the grounds of obviousness is arguing that a person of ordinary skill in the art would find the patent claim to be obvious in light of the entire prior art.  In determining if a claim is obvious, courts look to four factors: a) scope and content of the prior art; b) the level of ordinary skill in the art; c) differences between the claimed invention and the prior art; and d) any secondary considerations (i.e. commercial success of invention; industry skepticism about success or viability of invention, failure of others, etc).  The statutory standard states that a claim is obvious if a person of ordinary skill in the art would think that “the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole” were obvious.  35 U.S.C. 103, “Conditions for Patentability, Non-Obvious Subject Matter (2004).

Combining prior art references is permissible to demonstrate obviousness.  One way to prove obviousness is when the combination of prior references discloses every element of a claim.  If a combination of prior art references discloses every element of a patented claim, then that claim is invalid for being obvious.  However, another way to prove obviousness does not require disclosure of every element of the patented claim in a reference.  For example, if the difference between the prior art and the patented claim is a matter of general knowledge to people of ordinary skill in the art, then that general knowledge functions to fill the gap between the prior art and the claim, making the claim obvious even if one element of the claim had not been explicitly disclosed in a prior art reference.

Obviousness can be a tricky determination, because prior art references may only be combined under certain circumstances.  Some circumstances where certain prior art references can be combined are: where something in one reference suggests, teaches, or motivates (TSM test) a person of ordinary skill in the art to combine that reference with another one; where a person of ordinary skill in the art would think the combination was obvious to try; where common sense would motivate a person of ordinary skill in the art to combine references.

 [NOTE: with utility patents, invalidating one or more claims does not necessarily invalidate the whole patent. Just because one patent claim (even if it is an independent claim) is invalidated, this does not mean that the other claims have been invalidated as well.  It just means that the patentee cannot claim infringement of his patent based upon that particular claim.]

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