DatCard Systems Inc. v. PacsGear Inc., 8-10-cv-01288 (CACD April 1, 2013, Order) (Pfaelzer, J.).
Wednesday, April 3, 2013
Obvious Solution to Nonobvious Problem Does Not Render Patent Invalid
The court denied defendant's motion for summary judgment that two of plaintiff's medical imaging patents were invalid as obvious. "[Defendant] has, at its disposal, the use of common sense in this analysis. But mere recitation of the phrase 'common sense' will not do. . . . [Defendant] argues that '[i]f we look at the inventors’ options to accomplish each function, it is undeniable they were obvious' . . . The flaw with this argument is that it assumes that the PHOSITA would have an awareness of the problem solved by the invention. Often, the inventive contribution lies in defining the problem in a new revelatory way. Once the problem is defined, the solution might well be obvious; but the problem remains non-obvious. If courts invalidated patents simply because the problems described in the specifications bore obvious solutions, a significant percentage of existing patents would vanish. Such an analysis almost invites hindsight bias. . . . [Defendant] has not submitted evidence of the extent of the design need or market pressure which would have provided the [person having ordinary skill in the art] with a blueprint of the problem to be solved. The patent cannot provide this blueprint."