Scott Daniels | February 6, 2011
The CAFC’s 2-1 panel decision in Tokai v. Easton has caused quite a stir in the patent blogosphere. The majority opinion affirming a summary judgment that the three patents-in-suit were obvious over the prior art, plus Judge Newman’s vigorous dissent, have raised concerns that KSR may be applied too broadly by the CAFC, to the detriment of worthy patents and worthy patent owners whose success is vital to economic recovery.
These concerns are serious and deserve debate. But the question that interests us is whether the outcome would have been different if the obviousness issue had been determined in reexamination, rather than in the courts? Could the accused infringer have obtained the same result through reexamination? With 20-20 hindsight, plus a healthy amount of speculation, we conclude that it could have.
The patents claimed a utility lighter with an automatic child-safety mechanism: essentially a lock/lock release structure coupled with trigger system to create a “discharge voltage” to ignite flammable gas. An adult, but not a child, could operate the lighter because voltage is created only if the lock release and the trigger are engaged simultaneously, possible for with an adult-sized hand, but not a child’s. The panel majority – Judges Lourie and Bryson – found the various claims obvious over a primary reference for a cigarette lighter safety mechanism in combination, where necessary, with one or more secondary references.
Applying the four factor test for obviousness under Graham, the majority stated that there was no dispute of material fact regarding the content of the prior art or the differences between the claimed invention and the prior art. The only specific difference identified by the majority being “the intended position of the thumb and finger for operation of the lighter.” Though there was a dispute regarding the level of skill in the art, the trial adopted the “less sophisticated of the two asserted standards.” Since this holding favored the patentee, the majority did not take issue with it. Finally, regarding secondary considerations, the majority found insufficient evidence of nexus linking the commercial success and alleged copying to the automatic-locking features of the claimed lighter.
The majority focused on the simple nature of the mechanical components known in the prior art and the motivation for one skilled in the art to create a safer lighter, to conclude that the claims were invalid as obvious:
the undisputed facts in this case – including the state of the prior art, the simplicity and availability of the components making up the claimed invention, and an explicit need in the prior art for safer utility lighters – compel a conclusion of obviousness as to the subject matter of each of the claims.
Though some modification might be needed to convert the prior art cigarette lighter to a safety lighter, such modification was a mere “rearrangement of particular components.”
The majority’s analysis reads very much like the affirmances of obviousness rejections that issue daily from the PTO Board of Appeals. It is hard to imagine the Board, presented with the undisputed facts of this case, reaching a different conclusion. To be sure, one must consider Judge Newman’s vigorous dissent, in particular her criticism of the trial judge for excluding two expert declarations as offered too late, and for failing to give due consideration to the commercial success enjoyed by the claimed invention. Yet, the PTO Board itself is known to exclude declaration evidence presented too late in prosecution, and to apply a very strict nexus requirement to assertions of commercial success. The Board is unlikely to have handled the declaration exclusion and commercial success issues any differently than did the majority.
None of what is said here is meant to criticize any of the parties, but merely to suggest that there are some issues that may be less expensively resolved by reexamination at the PTO.