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Revisiting Obviousness
Many technology companies believe the current law on obviousness hinders product development by extending patent protection to insignificant advances. The Court of Appeals for the Federal Circuit ('CAFC') reconfigured the obviousness framework established by the Supreme Court to limit the subjectivity of obviousness determinations by adding a 'teaching-suggestion-motivation' test, which is at the heart of a case the Supreme Court has recently agreed to consider. In Teleflex, the CAFC applied the 'teaching-suggestion-motivation' test in vacating a lower court finding of obviousness. Teleflex Inc. v. KSR Intern. Co., 119 Fed.Appx. 282 (Fed. Cir. 2005). Substantially unchecked to date, this will be the first full hearing on the obviousness doctrine in more than 30 years.
In 1966, the Supreme Court introduced a multi-factored obviousness framework involving the consideration of the scope and content of the prior art which measured the differences between the patented invention and the prior art against the backdrop of the ordinary level of skill of people working in the field at the time of invention. Graham v. John Deere Co., 383 U.S. 1, 17 (1966). The Supreme Court realized the difficulty of recognizing non-obviousness in hindsight and allowed the weighing of secondary considerations, including economic and motivational factors as objective indicators of non-obviousness. Id. The Federal Circuit supplemented the Supreme Court's obviousness doctrine with its 'teaching-suggestion-motivation' test to protect against the entry of hindsight into the obviousness analysis in all cases ' not just those in which evidence is offered of these secondary considerations. In re Kahn, 441 F.3d 977, 986 (Fed. Cir. 2006).
Under the 'teaching-suggestion-motivation' test, even where all claimed elements exist in the prior art, a claim is non-obvious unless a teaching, suggestion, or motivation to combine the elements as claimed is found in the prior art. In re Dembiczak, 175 F.3d 994 (Fed. Cir. 1999). The motivation for a combination may be implied by the prior art as a whole, but there must be some specific record in the prior art to serve as a basis for such a conclusion. In re Kotzab, 217 F.3d 1365, 1370 (Fed. Cir. 2000). Prior to Teleflex, an implicit showing of obviousness was based on what the combined teachings in analogous prior art would have suggested in view of the knowledge of a person of ordinary skill and the nature of the narrowly tailored problem to be solved. Ruiz v. A.B. Chance Co., 357 F.3d 1270, 1277 (Fed. Cir. 2004). Under this approach, prior art from within a single field could be combined if it showed motivation for the suggested change even if the motivation was different from that which gave rise to the claimed invention. On the other hand, prior art from different fields could be combined only when the motivation provided by the prior art was the same as that which gave rise to the claimed invention. In re Oetiker, 977 F.2d 1443, 1446 (Fed. Cir. 1992).
Major Differences In UK, U.S. Copyright Laws
This article highlights how copyright law in the United Kingdom differs from U.S. copyright law, and points out differences that may be crucial to entertainment and media businesses familiar with U.S law that are interested in operating in the United Kingdom or under UK law. The article also briefly addresses contrasts in UK and U.S. trademark law.
Strategy vs. Tactics: Two Sides of a Difficult Coin
With each successive large-scale cyber attack, it is slowly becoming clear that ransomware attacks are targeting the critical infrastructure of the most powerful country on the planet. Understanding the strategy, and tactics of our opponents, as well as the strategy and the tactics we implement as a response are vital to victory.
The Article 8 Opt In
The Article 8 opt-in election adds an additional layer of complexity to the already labyrinthine rules governing perfection of security interests under the UCC. A lender that is unaware of the nuances created by the opt in (may find its security interest vulnerable to being primed by another party that has taken steps to perfect in a superior manner under the circumstances.
Removing Restrictive Covenants In New York
In Rockwell v. Despart, the New York Supreme Court, Third Department, recently revisited a recurring question: When may a landowner seek judicial removal of a covenant restricting use of her land?