Details:
Ex parte Baxter International, Inc.
Informative Opinion
Appeal 2009006493; Reexamination No. 90/007,751; Patent 5,247,4341; Tech. Center 3900
Decided March 18, 2010
This was an appeal in an ex parte reexam. The patent relates to a touch screen user interface for a kidney dialysis machine. A representative claim on appeal read:
12. In a method of operating a hemodialysis machine, an improvement in a user/machine interfacing process, the improvement comprising:
(a) providing a touch screen operably coupled to the machine, the touch screen adapted to display an indicium soliciting a user of the machine to touch a region on the screen so as to select a machine-operation parameter;
(b) touching the region to select the machine operation parameter;
(c) in response to said touching, invoking on the screen a data-entry display associated with the machine-operation parameter, the data entry display including a display of a permissibly settable range of the machine-operation parameter, so as to allow the user to select and enter a parametric value associated with the machine-operation parameter within said range; and
(d) touching the data-entry display to select and enter the parametric value so as to cause the machine to operate in conformance with the selected machine-operation parameter and the entered parametric value.
During the reexam, the Examiner rejected the claims as obvious. As a primary reference, the Examiner used "the CMS08 Handbook," a manual for a dialysis machine which used a control panel for input and a screen for display. As a secondary reference, the Examiner used a "SARNs 9000" manual describing a blood perfusion machine with a touch screen that supported both input and display. In response to the rejection, the patentee put forth various arguments of non-obviousness, and included various depositions from a related litigation to support some of these arguments.
The patentee made a number of arguments in the Appeal Brief. One of the arguments attacked the prima facie case of obviousness by explaining why a POSITA would not combine the asserted references. The patentee used the litigation depositions to provide factual support for this argument. For example:
Finally, the Patent Owner maintains that an ordinary artisan in the field of hemodialysis would not have looked to the cardio-pulmonary bypass (CPB) field for help in solving the problems of traditional user control of hemodialysis function. Baxter (the Patent Owner) and Fresenius (the Reexamination Requestor) are the two largest dialysis companies in the world. In the nearly five-year litigation surrounding these patents, almost sixty depositions were taken, including all of the named inventors, key present and past R&D personnel for both companies, numerous senior marketing executives, nephrologists, and other third-party witnesses in the dialysis field. It is hard to imagine a more representative sample of those "skilled in the art." Yet not a single witness from either Baxter or Fresenius had even heard of the Sarns machine. This fact speaks volumes about whether one of ordinary skill in the art of hemodialysis machines would have looked to the cardio-pulmonary bypass field for inspiration or problem-solving help.
As Dr. Lee Henderson, Baxter's expert consultant in hemodialysis and nephrology, points out in his expert report: "Based on my experience during the relevant time, there was very little, if any, technical exchange between engineers designing HD equipment and those designing heart-lung machines."
(Emphasis added, internal citations omitted.)
In the Answer, the Examiner treated the patentee's "POSITA would not combine" argument as a non-analogous art argument:
Appellants argue that testimony of Dr. Dennis Brunner and Lee Henderson supports the contention that the artisan would not have knowledge, awareness nor would have looked to the prior art in design of a touch screen hernodialysis device. Such testimony, while expert opinion is an argument akin to an assertion that the references are non-analogous art. These arguments are non-persuasive [because] the substantive issue here is more basic. The artisan already possessed functional hemodialysis devices [the CMS08] with suitable controls, guidance to selectable variables and alarm limits. ... The issue before the artisan was clearly more simple, related to the ease with which the user might analyze and effect a change in certain hemodialysis parameters. The issue comes down to one of programming, and whether the artisan would be guided to the art accepted input/output device of a touch screen to effect such parameter changes.
The Board affirmed all of the Examiner's obviousness rejections. After making various findings of fact about the teachings of the references, the Board concluded that:
[T]he collective teachings of the applied prior art references would have prompted a person of ordinary skill in the art to couple a touch screen interface with a hemodialysis machine. ... The interrelatedness of the prior art teachings, coupled with the expectation that a technique used to improve one device would also improve other similar devices, amply support the Examiner’s obviousness conclusion. KSR, 550 U.S. at 417-18.
In discussing the patentee's rebuttal evidence, the Board noted that the expert testimony was not credible because it focused on the wrong time period.
We also find no error in the Examiner’s refusal to credit the testimonies of certain experts as supporting Appellant’s skepticism or lack of a reasonable expectation of success argument. As pointed out by the Examiner, these experts testified on the knowledge of a person of ordinary skill in the art at a time period significantly before the relevant filing date. We have not been directed to any evidence indicating that further advances in touch screen technology did not occur up to the relevant filing date.
The Board also discounted the expert evidence because it failed to take into account the teachings of the asserted references:
Moreover, we have not been directed to any evidence that these witnesses, before giving their testimonies, considered the teachings of the applied prior art references, which plainly disclose the successful incorporation of touch screen interfaces into critical medical systems. Indeed, Appellant has admitted that “not a single witness from either Baxter or Fresenius had even heard of the [prior art] Sarns machine.” That admission reveals the lack of any substantial value in the relied upon evidence vis-a-vis Appellant’s argument.
Postscript: The patentee has appealed the BPAI decision to the Federal Circuit.
Other Blog Coverage: The BPAI marked this decision "Informative," but I've no reason to think this status has anything to do with the issues discussed here. Several other bloggers have said the Informative status is due to the BPAI's discussion of the differing standards of validity applied to reexam and litigation.
See "District Court Analysis v. PTO Reexamination Analysis" at Patents Post-Grant and "BPAI Informative Opinion Underscores Different Validity Standards for Reexams" at The 271 Patent Blog.
For an explanation of precedential, informative and routine status, see my post "Meaning of BPAI Precedential and Informative Opinions."
My two cents: The Board's point about the time period considered by the experts is well taken. That is, the viewpoint for non-obviousness is the time of filing, so whether or not POSITAs would have used touch screens a full five years before filing is not very probative. Remember that when gathering your rebuttal evidence.
On the other hand, the Board took a cheap shot with the quote "not a single witness had even heard of [the prior art] Sarns machine." The evidence in question was not submitted for the purpose of distinguishing the reference. Instead, the evidence was submitted as a factual statement about why an actual person in the art did not look to prior art like the Sarns machine – because that person simply didn't think of perfusion machines when addressing a problem with a dialysis machine. So why is it a big deal that the witness was unaware of the Sarns perfusion machine?
Perhaps the Board is making a bigger point: that anyone involved in designing user interfaces for dialysis machines who isn't familiar with the touch screen interface on the Sarns perfusion machine isn't a true POSITA? If so, I'd like to hear an explanation of why the Board thinks that is the case.
The patentee offered evidence from real people involved in product development. Is the law even interested in what actual persons in the art did or didn't do, looked at or didn't look at? I appreciate that obviousness is from the viewpoint of a hypothetical POSITA. But what's wrong with using real POSITAs to inform our understanding of the hypothetical POSITA?
Sure, there may be concerns about the credibility of POSITA testimony when the POSITA has a connection to the patentee or applicant. Fair enough. The fact finder can take that into account.
But suppose you had 100 disinterested POSITAs say "I wouldn't have combined A with B and here's why." Do you ignore that information because we're only interested in what hypothetical POSITAs would do, rather than what real ones would do? Or, in the case of Baxter, did not do (look to perfusion machines).
Related Posts: I'll be doing another post about Ex parte Baxter that discusses the "skepticism of experts" doctrine in more detail. The Board didn't have much to say about the merits of this argument (only about the credibility of the testimony), but the Examiner's comments are worth discussing.
"But suppose you had 100 disinterested POSITAs say "I wouldn't have combined A with B and here's why." Do you ignore that information because we're only interested in what hypothetical POSITAs would do, rather than what real ones would do?"
ReplyDeleteYou don't quite ignore it. But you give it little weight, for the simple reason that the hypothetical POSITA is a freakishly knowledgeable person with little resemblance to a flesh and blood human being.
The doctrine of analogous art proves that POSITAs are not omniscient. But they are still pretty damn close. For example, a POSITA in the mechanical arts might not know about certain art in the chemical arts. But the POSITA sure does know about EVERY SINGLE PRIOR ART REFERENCE IN THE MECHANICAL ARTS, even if it was only laid open in the Canadian Patent Office just in case some randomly asked to inspect it.
You're absolutely right that this is an anomaly in patent law that is disconnected from reality. But the law was settled long ago.
See A Realistic Approach to the Obviousness of Inventions by Lemley:
http://scholarship.law.wm.edu/cgi/viewcontent.cgi?article=1068&context=wmlr
POSITA = Person of Omniscient Scienter In The Art?
ReplyDeleteScienter is a term of art with a different, specific meaning in the law:
ReplyDeletehttp://en.wikipedia.org/wiki/Scienter
It means "intent or knowledge of wrongdoing."
Still, you have the right idea.
As the Lemley article repeatedly quotes case law: the POSITA is assumed to have "perfect knowledge" of the relevant (i.e. analogous) art.
"But the POSITA sure does know about EVERY SINGLE PRIOR ART REFERENCE IN THE MECHANICAL ARTS"
ReplyDeleteReally, what cr@ck are you smoking today? That isn't even close to the law on non-analogous prior art.
>>But the POSITA sure does know about
ReplyDelete>>EVERY SINGLE PRIOR ART REFERENCE IN
>>THE MECHANICAL ARTS"
>Really, what cr@ck are you smoking today?
>That isn't even close to the law on
>non-analogous prior art.
Agreed: test for analogous art doesn't map to "refs are classified into the same technology center." Kip was probably exaggerating for effect. It does seems to me that the analogous art doctrine captures references that are quite disparate.
>the law was settled long ago.
ReplyDelete>See A Realistic Approach to the
>Obviousness of Inventions by Lemley
Kip, thanks for the pointer. I'm familiar with some of Lemley's work but haven't come across this one.
I don't recall too many BPAI cases where the Applicant offered on-point evidence about what a real POSITA thought. So I was struck reading this case by the clear disconnect between real and hypothetical POSITAs.
I was exaggerating, but only slightly.
ReplyDeleteFrom MPEP 2141.01(a) ("Analogous and Nonanalogous Art"): "In a simple mechanical invention a broad spectrum of prior art must be explored and it is reasonable to permit inquiry into other areas where one of ordinary skill in the art would be aware that similar problems exist." (citation omitted).
You can always try the non-analogous art argument, and I wish you luck. But it's unlikely to win. That's simple statistics.
"other areas where one of ordinary skill in the art would be aware that similar problems exist."
ReplyDeleteThis is classic non-analogous prior art jurisprudence. First inquiry -- are you in the same field of the endeavor? Second inquiry -- is the reference "reasonably pertinent to the particular problem with which the inventor is involved" or a "problem known in the field of endeavor at the time of invention."
"But it's unlikely to win. That's simple statistics."
Really, you call yourself an engineer yet you don't know what statistics are? Let me give you a hint. "Statistics" do not represent your fondest dream of what would make it easier for an examiner to reject a patent application.
I make plenty of non-analogous art arguments. One of the good thing about them is that most examiners don't know even know how to begin to respond to them.
>most examiners don't know even know how
ReplyDelete>to begin to respond to [non-analogous art
>arguments]
Sure they do: Not persuasive.
In the art units I deal with, I've found very little correlation between the strength of an argument and the amount of attention the Examiner gives to the argument.
Some Examiners routinely dismiss even the strongest argument with "Not Persuasive." Other Examiners always give a rebuttal and/or more explanation, even for a weak argument.
"Some Examiners routinely dismiss even the strongest argument with "Not Persuasive." Other Examiners always give a rebuttal and/or more explanation, even for a weak argument. "
ReplyDeleteActually this is the way to go; for strong arguments you can forego all the analysis and rebuttal with "not persuasive" and you can drop the hammer on weak arguments for a major beatdown
"Some Examiners routinely dismiss even the strongest argument with 'Not Persuasive.' Other Examiners always give a rebuttal and/or more explanation, even for a weak argument."
ReplyDeleteVery, very typical -- not for just the USPTO but for life in general. When you give multiple arguments, the arguments you'll get the most response to are typically your worst arguments. For this reason, there is a line of reasoning that recommends only making your best arguments.
This line of reasoning has a point, but I prefer to make as many as I possibly can -- weak and strong. There is only so much an Examiner can write in response, and I love writing "Examiner has failed to even attempt to address Appellant's arguments regarding X in the Examiner Answer." Also, the more the Examiner writes (even if it is on weak arguments), the more error I find. Examiners are really bad in identifying inconsistencies within their own arguments.
Who would ever have thought to have used a touch screen for user input? I mean it's only capable of accepting user inputs.
ReplyDelete"For this reason, there is a line of reasoning that recommends only making your best arguments."
ReplyDeleteYou should make every argument that you would want to preserve for appeal.
>preserve for appeal.
ReplyDeleteYou're referring to appeal from BPAI to Fed Cir, right?
I say that because you are *not* required to make an argument first in prosecution before making it in an appeal brief.
"You're referring to appeal from BPAI to Fed Cir, right?"
ReplyDeleteYes.
Though if I'm going to argue non-analogous art, I usually do it before I appeal to BPAI. The examiners never find it persuasive, but the Board does sometimes. Of course, if they can avoid addressing the non-analogous art arguments and reverse on some other argument, they will usually do that.
There is no such thing as a REAL POSITA. That is like saying that there is a Real Reasonably Prudent Person who can testify what they would have done in a given situation in a Tort Law litigation.
ReplyDelete>no such thing as a REAL POSITA.
ReplyDeleteAgreed. I'm just saying that we could use evidence about what real people think/do to inform our understanding of a [hypothetical] POSITA.