Whether a patentee's claim is obvious when one prior art reference teaches a component of the claimed invention and additional references provide the motivation to modify that component to create the method that is the subject of the claimed invention.
Yes. Where the range of prior art contains both a component of the patented invention and suggests the modification of that component to create the claimed invention, the invention is obvious as a matter of law.
After a "Markman" hearing the court issued an order construing several claim terms including "cell," "identifying compounds," and "selecting compounds."
At trial the jury returned an $18 million verdict in favor of SIBIA, finding that Cadus infringed the single independent claim and a number of dependent claims in the '629 patent. Cadus filed several post-trial motions including a motion for JMOL. The trial court denied all of the motions and Cadus appealed.
In a de novo review, the Federal Circuit presumed that the jury resolved all factual disputes in favor of the prevailing party unless the Court concluded that the findings were not supported by substantial evidence. See, Jurgens v. McKasy, 927 F.2d 1552, 1557, 18 USPQ2d 1031, 1035 (Fed. Cir. 1991).
Cadus argued that the prior art rendered claim 1 of the '629 patent obvious. Under section 103(a) a patent claim is invalid if differences between the claimed matter and the prior art are such that the invention as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art. See 35 U.S.C. 103(a). The Federal Circuit noted that a single prior art reference closely describing the claimed invention can render the invention obvious. Furthermore, the Court clarified that to support the obviousness conclusion there must be a showing of a suggestion or motivation in the prior art to modify the teachings of that reference to the claimed invention.
The Federal Circuit held that an academic research paper ("Stumpo"), published prior to the time the invention was made, would "[lead] one to within a hairsbreadth of anticipation [of the patented claim]." See Deborah J. Stumpo et. al. Indentification of c-fos Sequences Involved in Induction by Insulin and Phorbol Esters, 263 J. Biological Chem. 1611 (Feb. 1988). Furthermore, the court found undisputed evidence that at the time of the invention, the motivation to modify the Stumpo reference to create the method of the claimed invention did exist in the prior art. The court cited a second academic article ("Lester"), that suggests the modification of Stumpo to achieve the claims of the '629 patent. See Henry A. Lester, Heterologous Expression of Excitability Proteins: Route to More Specific Drugs?, 241 Science 1057 (Aug. 1988). The court held that the undisputed teachings in the prior art, as analyzed by someone of ordinary skill in the art, provided the suggestion to use the Stumpo reference in the same manner as claimed by the '629 patent.
Finally, the Federal Circuit held that because the prior art rendered the '629 patent obvious to someone of ordinary skill in the art, at the time the invention was made, the patent was invalid as a matter of law. Thus, the district court should have granted Cadus' motion for JMOL, as no reasonable jury could have found that there was no motivation to modify Stumpo to create the claimed invention at the time the invention was made.
A strong dissent by Chief Judge Mayer questioned the Federal Circuit's obviousness analysis and argued that the court did not use the proper test for motivation to modify a reference in the prior art. Justice Mayer reasoned that a patent is obvious if a single reference provides a component and a second single reference suggests a modification of the component to arrive at the claimed invention, or if a series of references, combined as they are, teach the invention in combination. However, the Chief Justice noted that motivation should not be found in the combination of references to retrospectively teach the invention by rendering the steps to be taken as obvious. Thus, Justice Mayer argued that the jury's verdict of infringement should stand.
Prepared by the liibulletin-patent Editorial Board.