The USPTO grants about 300,000 patents per year. Maybe half of these patents would not hold up in court simply because of "missed prior art" (i.e., prior art similar or identical to the invention but not included in the writing of the patent).

For patents with no "missed prior art", it looks to me like many seemingly-obvious inventions hold up in court. E.g., TiVo vs Comcast, but I know that being obvious is just my opinion.

Are there high-profile examples where a patent with no "missed prior art" did not hold up in court (so I can see how obvious something really needs to be)?

  • The answer is simply “nothing“. I think I can give you the reasoning next week, I like this question a lot actually. – DonQuiKong Jun 21 '18 at 21:25

A similar Rovi/Tivo lawsuit against Netflix concluded with all patents ruled invalid under 101 (non-patentable subject matter). This decision was rendered based on an investigation of the patents themselves, without prior art being a factor.

See https://www.leagle.com/decision/infdco20150716881

  • Thanks. But, as you probably guessed, I was more looking for invalidated patents under 103 (obviousness) since that borderline seems too low to me. If you add a good example of that, I'd mark yours as the answer. – bobuhito Jun 20 '18 at 22:18
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    Thank you for the clarification I in fact misunderstood your question thinking you were looking for examples of invalidation without using newly-uncovered prior art. – user1400786 Jun 20 '18 at 23:20
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    @bobuhito I think you should clarify your question if you are specifically looking for invalidation under 103. – Eric Shain Jun 21 '18 at 13:57

Obviousness is not a subjective thing. Without prove of it's obviousness nothing is obvious.

If an invention is new, meaning there are differences to a single piece of closest prior art, the entitiy alleging obviousness needs to find prove that the differentiating element was known and known or suspected to be combinable with the piece of prior art. Thats needs to be proven. It cannot be proven without a document or (really) common knowledge. But common knowledge in this case would be "a car can have 4 wheels", not "I can use algorithm x to do y".

And therefore, nothing is obvious unless the prior art teaches all of it's limitations in as few documents as possible (in most cases 2) from at least neighbouring fields.

But that doesn't answer your question, does it? That's because that is the part about combining references, but the references are combined and/or read by a person skilled in the art. And wouldn't that person skilled in the art know a little more than "a car has 4 wheels"? Maybe which algorithm to use to achieve thing y?

Yes! But! As I said, obviousness needs to be proven. You need to prove that the person skilled in the art would know that.

If you find a standard textbook teaching the missing limitation, the invention was obvious for the person skilled in the art.

Which is the answer to your question. Anything that can be found in standard literature for the field is obvious. But that needs to be proven. And proving that would require a reference (even though some standard textbook or something similar), which would actually be "missed prior art". Therefore I stand by my answer: "Nothing is obvious without prior art teaching it."

  • Could you elaborate/clarify on who needs to "prove that the person skilled in the art would know that"? – Kane Chew Jul 3 '18 at 14:07
  • @KaneChew whoever alleges obviousness (the examiner or the party trying to invalidate the patent) – DonQuiKong Jul 3 '18 at 15:32

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