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A patent is invalid as obvious if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. 35 U.S.C.S. § 103(a). Obviousness is a question of law with several underlying factual inquiries, identified as the Graham v. John Deere Co. factors: (1) the scope and content of the prior art; (2) the differences between the prior art and the claims at issue; (3) the level of ordinary skill in the field of the invention; and (4) objective considerations such as commercial success, long felt but unsolved need, and the failure of others. Patent invalidity must be established by clear and convincing evidence.
The patents-in-suit, which shared a common specification, were directed to an improved apparatus for conducting offshore drilling, and disclosed a pipe handling system. Following a prior remand, a jury found that the alleged infringer failed to prove that the asserted claims would have been obvious or that they were not enabled. The jury made specific findings that the prior art failed to disclose every element of the asserted claims and that each of seven objective factors indicated non-obviousness. The jury awarded $15 million in compensatory damages for infringement. The district court, however, granted the alleged infringer's motions for judgment as a matter of law. The patentee appealed.
Were the patentee’s inventions obvious, and thereby, invalid?
The court of appeals held that the patentee presented sufficient evidence of both commercial success and nexus to the features of the claimed invention. The invention appearing to have been obvious in light of the prior art was, in fact, not obvious under 35 U.S.C.S. § 103(a). The claims were not, and substantial evidence supported the jury's finding that the alleged infringer literally infringed the asserted claims. Accordingly, the court reversed the district court’s judgment.