United States: CAFC Teaches Away On Teaching Away

Divergent Technical Teachings of a Primary Reference Matter in an Obviousness Analysis

A popular counter-argument to an obviousness attack is that the primary reference of the combination "teaches away" from the proposed combination. That is, if reference (A) is proposed to be modified by the teachings of reference (B) in some manner, and reference (A) criticizes, discredits or discourages that manner of combination, then reference (A) is said to "teach away" from the combination — thus, precluding an obviousness determination on that proposed combination.

In practice however, it is a rare reference that includes a technical explanation that is so strongly worded to satisfy the teaching away standard. Yet, as the Federal Circuit made clear this week, less pronounced evidence of divergent technical teachings cannot be disregarded by the Patent Trial & Appeal Board (PTAB).

As obviousness is analyzed in retrospect, there is a strong potential for hindsight bias. For this reason, there are a number of related safeguards to the teaching away prohibition. All of these safeguards are designed to protect from hindsight bias by considering the basic starting point of any obviousness combination — the "motivation," or articulable rationale for modifying the primary reference in the first instance.

For example, in addition to teaching away, there are related doctrines such as "operating principle" and the "intended purpose of a primary reference. A modification to either of these is rarely considered to be an obvious change. Likewise, any modification to the primary reference that would render the primary reference inoperable is also an unobvious change.

Last week in Polaris Industries, Inc. v. Arctic Cat, Inc. the Federal Circuit explained the proper analysis of divergent technical teaching evidence as follows (here):

Polaris contends that the Board's analysis with respect to [claims 17-19] suffers from multiple legal errors, all of which stem from the premise that "[v]ehicle design is essentially a packaging exercise," in which the "components are standard, but where they are placed is creative." [¶] We conclude that the Board's analysis of these claims was inadequate. . . . This is because the Board (1) failed to consider Polaris's uncontested evidence that skilled artisans would not have been motivated to place a fuel tank under Denney's seats; and (2) applied a legal analysis that not only finds no support in our caselaw, but also runs contrary to the concept of teaching away.

Polaris introduced undisputed evidence below that placing a fuel tank underneath one of Denney's seats would have required significantly raising the occupancy area. According to Polaris, such a modification would have been contrary to Denney's teaching that, "[b]y raising the occupancy area, the center of gravity of the ATV is also raised," which results in "a decrease in vehicle stability and subsequent increased risk of rollovers.["] The question, then, is whether the Board properly considered this undisputed evidence and other evidence introduced by the parties in evaluating whether persons of skill in the art would have been motivated to modify Denney to meet the limitations of claims 17–19. [¶] The remainder of the Board's analysis demonstrates that it did not. The Board failed to analyze whether Denney "teaches away" from claims 17–19 by determining whether "a person of ordinary skill, upon reading [Denney], would be discouraged from following the path set out in [Denney], or would be led in a direction divergent from the path that was taken by the applicant." This was error.

[T]he Board rejected Polaris's supposed "conflat[ion] [of] known modifications having known benefits with subjective preferences," and held "that an obviousness analysis should focus on whether a modification is known to implement and has known benefits[.]" The Board then stated that "one of ordinary skill has the ability to weigh the various benefits and disadvantages based on subjective preferences in an analysis largely unrelated to obviousness." [¶] We have never articulated a framework for analyzing whether claims would have been obvious that includes the phrase "subjective preference" or that permits a tribunal to wholly disregard the significance of prior art teachings based on such a characterization. Nevertheless, the Board applied its "subjective preferences" analysis to reject Polaris's argument that Denney's stated desire for a low center of gravity "teaches away" from making modifications that would raise the ATV's center of gravity, without conducting a proper teaching away analysis.

There are three specific problems with the "subjective preference" analysis espoused and applied by the Board. First, by completely disregarding certain teachings as ill-defined "subjective preferences," the Board's approach invited the "distortion caused by hindsight bias" into the fold. . . . [¶] Second, the Board focused on what a skilled artisan would have been able to do, rather than what a skilled artisan would have been motivated to do at the time of the invention. . . . [¶] Third, the Board's analysis encourages the fact-finder to outright discard evidence relevant both to "teaching away" and to whether skilled artisans would have been motivated to combine references. . . . . .But even if a reference is not found to teach away, its statements regarding preferences are relevant to a finding regarding whether a skilled artisan would be motivated to combine that reference with another reference.

The Board's treatment of [the undisputed] evidence was deficient, and we therefore vacate its determination that claim 17 would have been obvious. Because claims 18 and 19 depend from claim 17, we vacate the Board's obviousness determination with respect to those claims as well. [¶] On remand ... [t]he Board must determine whether Denney merely expresses a general preference for maintaining very low seats or whether Denney's teachings "criticize, discredit, or otherwise discourage" significantly raising the occupancy area of Denney's ATV to add a fuel tank under one of the seats. Even if the Board determines that Denney does not teach away because it merely expresses a general preference, the statements in Denney are still relevant to determining whether a skilled artisan would be motivated to combine Denney and Furuhashi.

(emphasis added, internal quotes/citations omitted)

Again this week, the Board considered a potentially divergent technical teaching of a primary reference, but this time noted the Board's flexibility absent evidence on point in Think Products, Inc. v. ACCO Brands Corp. (here). In this instance the Board explained:

In particular, the Board relied on the statement with regard to the alternate embodiment of Figure 4 that "[w]ith this configuration, the locking head 104 will not rotate relative to the anchor 20," to infer that other embodiments, such as figure 2, "permit[] rotation." The Board further noted that the testimony of Think Products's expert "fail[ed] to explain adequately why a person of ordinary skill in the art would understand from McDaid's disclosure [] that the embodiment of Figure 2 does not permit rotation"—i.e., that there was nothing in the record before the Board to show that Figure 2 did not rotate. Thus, the Board held that McDaid did not teach away from a combination with Chen and that all of the challenged claims would have been obvious over the two references.

. . .

Think Products cites nothing in the record, whether statements from the prior art or expert testimony, to support this understanding of Figure 2. The Board (1) reasonably inferred from the disclosure that Figure 4 did not permit rotation that other embodiments may permit rotation, (2) reasonably concluded that the structure of Figure 2 appears susceptible to rotation, and (3) correctly noted that nothing in the record, including the testimony of Think Products's expert, indicates that the embodiment of Figure 2 does not permit rotation. Thus, we find the Board's conclusion of obviousness to be supported by substantial evidence.

As pointed out by the Court in Polaris "[w]e have observed that the prejudice of hindsight bias often overlooks that the genius of invention is often a combination of known elements which in hindsight seems preordained. We have also recognized that, when the art in question is relatively simple, as is the case here, the opportunity to judge by hindsight is particularly tempting." (internal quotes and citations omitted)

Patent Owners seeking to leverage the available safeguards against hindsight bias in an obviousness determination, divergent technical teachings and illogical modes of combination must be supported by evidence to force the discussion on the USPTO, not mere attorney argument.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
In association with
Related Topics
 
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions