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Archived updates for Monday, July 14, 2008

Simulatenous Invention Obviousness Defense

According to "Secondary Considerations of Obviousness in a Patent Case: The Seldom-Used Simultaneous Invention Factor" by Brent Yamashita, simultameous independent invention is an often overlooked obviousness argument for accused infringers, especially where the invention occurs shortly after an enabling technology is introduced:

The Federal Circuit has stated that, "[T]he possibility of near simultaneous invention by two or more equally talented inventors working independently,… may or may not be an indication of obviousness when considered in light of all the circumstances." Ecolochem, 227 F.3d at 1379 (quoting Lindemann Maschinenfabrik GMBH v. American Hoist and Derrick Co., 730 F.2d 1452, 1460 (Fed. Cir. 1984)). In other words, the fact that another person simultaneously and independently created the same invention claimed in the patent-in-suit can serve as an indication that the invention was obvious.

Every accused infringer should consider this often-overlooked secondary consideration in preparing its obviousness defense. This factor can be particularly useful in a situation where the simultaneous inventions occurred shortly after an enabling technology was introduced. Some inventions only become possible—or relevant—once a foundational technology becomes known. For example, tires could not have been invented before the wheel and would have been meaningless before the wheel. An enabling technology can serve as a chronological starting point for the simultaneous inventions that follow, which can be useful in gauging obviousness of the invention.

. . . the simultaneous invention factor properly recognizes the fact that in some instances inventions do not occur after years and years of toiling in a laboratory, but rather, after a minimal effort (executed by others independently and simultaneously) after a breakthrough in an enabling technology that is not itself the subject of the invention.

Historian Thomas P. Hughes was the first to apply this notion of common "reverse salients" for identifying enabling technologies that may lead to simultaneous invention. As noted by Nicholas G. Carr,

That odd term has its origins in descriptions of warfare, where it refers to a section of an advancing military force that has fallen behind the rest of the front. This section is typically the point of weakness in an attack, the lagging element that prevents the rest of the force from accomplishing its mission. Until the reverse salient is corrected, an army’s progress comes to a halt.

Hughes described in his book Networks of Power: Electrification in Western Society, 1880–1930 (Johns Hopkins University Press, 1983), a reverse salient often forms as a complex technological system advances: “As the system evolves toward a goal, some components fall behind or out of line. As a result of the reverse salient, growth of the entire enterprise is hampered, or thwarted, and thus remedial action is required.” In technological advance as in warfare, the reverse salient is the weak link that impedes progress.

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Anonymous Joe Milstein said...

By the logic of obviousness based on simultaneous invention, many patents that issue after having been through an interference should be deemed "obvious" when that may well not be the case.

However, in a "first to file" legal regime, the second or later application simply loses (unless one can show derivation), and falls off the face of the Earth, so that the earliest filed application is not as readily seen to be obvious, whether or not it is obvious.
Why should the filing regime have any bearing on obviousness?
Any comments or thoughts?

July 17, 2008 9:43 AM  
Anonymous Anonymous said...



April 06, 2009 11:32 PM  

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