Xelfelet is Hindsight for Teleflex.

This week’s best read on the art of hindsight reconstruction is In re Icon Health & Fitness, (CAFC 8/1/2007).  It recalls the fable of how truth became a story, then the story became a metaphor, and eventually, the metaphor replaced the truth.  At some point in the obviousness analysis, it should be asked whether “the differences between” the claimed invention and the several prior art references “are such” that the invention would have been obvious.  The term “differences” is truly in the statute, and truly in Graham v. Deere.  That has evolved into the ‘could’ve been combined’ test, and even that standard gets lowered in Icon.  Starting from a point of combining, supplants the true first step of identifying the differences.

Perhaps still smarting from its “rigid” test being undone by KSR, the panel in Icon focuses on the motivation to combine a catalog ad for a folding treadmill with a feature on a folding bed, as proof of the obviousness of a gas spring assist on a folding treadmill.  To turn a hindsight reconstruction into an obviousness conclusion, first overlook the differences, and don’t forget to blur the lines between evidence that is relevant, and that which genuinely is proof.

Icon argued that a bed and a treadmill are non-analogous arts, and the CAFC agreed – BUT, the problem being addressed was similar.  The decision equates coil springs on a folding bed with the gas spring claimed as an element of the folding treadmill. 

While one may agree that the similarity of the problem suggests that the art is not non-analogous, the CAFC takes that one step higher, and finds that similarity is itself proof of a motivation to combine.  What?  The panel in Icon finds that showing that the references addressed a similar problem “goes a long way towards demonstrating a reason to combine” those references.  Perhaps the opposite proposition is logical: non-analogous = non-obvious; but, a similarity of the problem at hand, does not IMHO “further support[] the idea that one skilled in the art would combine” features on a bed to innovate a treadmill.  That is where TSM had provided some glue between the “differences” and the claimed invention.  Now, if the art show is analogous, then it’s only a short drive further to obviousness.

The panel’s synthesis of wider ranging points recalled the deposition testimony of an expert opining about obviousness, who stated that although he could point to nothing that would suggest the art being combined, that when he had all the prior art in his mind, he could close his eyes, and “see a bridge forming” between their separate teachings.  The Judge, hearing his first patent case, got this expression of ‘Doctor, are you self-medicating.’  Here, a person of ordinary sleeping skill, lying on a folding bed likely would dream of sheep trodding upon a folding treadmill, or himself sleepwalking on a bed, and Eureka – it’s obvious to combine those.