Friday, May 22, 2009

Patent Claim May be Obvious Even Though a Limitation is not Disclosed in Any Prior Art Reference

"It cannot be said that Federal Circuit precedent establishes that every single claim limitation must be identified in the prior art for a court to invalidate a patent claim on the basis of obviousness. Nor is it apparent that, even if there had been such a rule, [KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007)] left it untouched. That unanimous Supreme Court decision dealt specifically with the teaching-suggestion-motivation test, but its reach was not explicitly limited to that issue; rather, the opinion set out principles implicating the nonobviousness analysis more generally. . . . This court can discern no rigid 'each and every limitation' rule in either the statutory language of section 103 or the flexible test set forth by the Supreme Court in Graham and reaffirmed in KSR. Accordingly, the fact that the final limitation of the [asserted patents] is not disclosed in any piece of prior art here in evidence does not mean that the claim necessarily meets the requirement of non-obviousness."

Seiko Epson Corporation v. Optoma Technology, Inc., 3-06-cv-06946
(CAND May 15, 2009, Opinion)
District Judge Marilyn H. Patel

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