“The Zup case presents an excellent vehicle for correcting Federal Circuit rulings and restoring rationality and predictability to obviousness doctrine.”

On behalf of nonprofit, U.S. Inventor, Inc., and over a dozen other amici, Flachsbart & Greenspoon, LLC has submitted a Brief of Amici Curiae urging the Supreme Court to grant certiorari from the Federal Circuit’s notoriously error-ridden decision in the waterskiing case: Zup, LLC v. Nash Manufacturing, Inc. Reviewing this decision will be an excellent way to get obviousness doctrine back on track.

In that 2-1 decision (with Judge Newman dissenting), the Federal Circuit held that even “considerable” or “strong” objective evidence of nonobviousness will sometimes not save a patent from an obviousness ruling. That ruling is wrong. It is also out of touch with Supreme Court doctrine.

Geo. Martin Relied Upon After Being Overruled

In announcing its disdain for objective indicia of nonobviousness, the panel majority resuscitated a prior Federal Circuit decision. That earlier decision (Geo. M. Martin Co. v. All. Mach. Sys. Int’l LLC, 618 F.3d 1294 (Fed. Cir. 2010)) had been interpreted to hold that objective evidence of nonobviousness always deserves no weight when “the differences between the prior art and the claimed invention are [] minimal.” The panel majority apparently overlooked Apple Inc. v. Samsung Elect. Co., 839 F.3d 1034, 1056-57 (Fed. Cir. 2016) (en banc), which overruled this exact point of law, stating unambiguously: “we reject such a categorical rule.” Is it a coincidence that the members of the Zup panel majority were dissenters from the Apple decision?

Even the en banc Apple holding did not go far enough, in view of how the Supreme Court actually treats objective indicia. It takes little effort to discover that Supreme Court law holds that evidence of objective indicia (particularly long-felt need) outweighs inferences of technical obviousness in exactly that situation where some Federal Circuit judges give it no weight—when the improvements seem minimal and simple.

Getting to The Point

The whole point of obviousness law is to weed out developments that deserve the protections of a patent from those that do not. Graham v. John Deere Co., 383 U.S. 1, 11-12 (1966) (noting that patentability tests are a “means of weeding out those inventions which would not be disclosed or devised but for the inducement of a patent.”). The law of obviousness contemplates that some developments, though technically novel, do not deserve a patent because ordinarily-skilled artisans would inevitably (and soon) already develop them. Id. If the field would already, inevitably, and soon, give rise to the technology under review, no patent should issue. But if the field needed a unique push from one particular inventor to trigger that particular improvement in the art, the inventor deserves a patent.

The Supreme Court has noted that the most probative indicator of what would have happened in the real world is what did happen in the real world.

The Carnegie Steel Example

The Supreme Court considers that long-felt need (where present) indicates the patentability of an invention. See, e.g., Carnegie Steel Co. v. Cambria Iron Co., 185 U.S. 403 (1902). As recited in the facts of Carnegie Steel, steel makers faced a longstanding problem of inefficiency in the leading steel-making method of the day: the “indirect method.” Under the indirect method, blast furnace molten iron had to be solidified into “pigs,” and then re-melted to carry out the final carbonization to make iron into steel. Id. at 410-12. Many in the industry had attempted a “direct” method, involving direct delivery of molten iron from multiple blast furnaces to the final stage. But these attempts resulted in non-uniform and inconsistent product and had to be abandoned. Id. at 411. Then Jones found the solution: using covered channels from the blast furnaces that fill an intermediate always-filled covered reservoir, thus continually mixing the molten intermediate product and eliminating the non-uniformities. Id. at 415, 425. The Jones invention changed everything. Manufacturers no longer needed to solidify and re-melt the pigs.

The process deserved a patent for the very reason that Jones came up with a simple solution in the face of long-felt need, since that is the “common history of important inventions”:

It is true the Jones patent is a simple one, and in the light of present experience it seems strange that none of the expert steel makers, who approach so near the consummation of their desires, should have failed to take the final step which was needed to convert their experiments into an assured success. This, however, is but the common history of important inventions, the simplicity of which seems to the ordinary observer to preclude the possibility of their involving an exercise of the inventive faculty. The very fact that the attempt which had been made to secure a uniformity of product, seems to have been abandoned after the Jones invention came into popular notice, is strong evidence tending to show that this patent contains something which was of great value to the manufacturers of steel, and which entitled Jones to the reward due to a successful inventor.

Id. at 429-30. The Carnegie Steel Court concluded by extensively quoting its prior holding that “it is evidence of invention” when a combination of known elements that were each “under their very eyes” of “even the most skillful persons . . . produce a new and useful result, never attained before”:

We cannot better conclude this opinion than by the following extract from the opinion of Mr. Justice Bradley in Loom Co. v. Higgins, 105 U.S. 580, 591: “But it is plain from the evidence, and from the very fact that it was not sooner adopted and used, that it did not, for years, occur in this light to even the most skillful persons. It may have been under their very eyes, they may almost be said to have stumbled over it; but they certainly failed to see it, to estimate its value, and to bring it into notice. . . . Now that it has succeeded, it may seem very plain to any one that he could have done it as well. This is often the case with inventions of the greatest merit. It may be laid down as a general rule, though perhaps not an invariable one, that if a new combination and arrangement of known elements produce a new and beneficial result, never attained before, it is evidence of invention.”

Id. at 446.

In fact, proof that a combination met a long-felt need implies invention, and thus constitutes proof that the combination produces synergistic results—i.e., a new function or operation for the parts-in-combination, not theretofore known. Paramount Publix Corp. v. American Tri-Ergon Corp., 294 U.S. 464, 474 (1935) (“Where the method or device satisfies an old and recognized want, invention is to be inferred, rather than the exercise of mechanical skill. For mere skill of the art would normally have been called into action by the generally known want.”) (emphasis added).

A “Long Felt Need” for Predictability

The Brief we have submitted in Zup contains additional reasoning on point. Notably, the Brief demonstrates error by those judges who believe that the Graham decision (as well as the later KSR decision) found obviousness “despite” the presence of objective indicia. It is easy to show that those cases involved the absence of objective indicia as a factual matter, and thus cannot be read to diminish the importance of objective indicia when present.

The Zup case presents an excellent vehicle for correcting Federal Circuit rulings and restoring rationality and predictability to obviousness doctrine. Petitioner contends (and submitted evidence) that the Zup waterskiing invention opened up the sport for the first time for nonathletic participants. The “simple” solution was a set of structures, admittedly novel in its combination, that let a user rise from a prone to an upright position while remaining stable, to grasp the tow rope. Where there is evidence of long-felt need, a court should not rule a patent claim obvious because the solution was simple and those of skill “stumbled over it” without discovering it. That is instead why a court should hold the claim nonobvious.

Note: Gene Quinn drafted the Zup patent at issue.

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