Patent Law

Paid As Used

By Gary Odom and Jordan Kuhn

Richard P. Mettke got 5,602,905, claiming a "public on-line, pay-as-you-use communications terminal." He wanted his claims directed to the Internet, so he filed for reissue, pursuant to 35 U.S.C. §251, "submitting with his application a declaration stating that he believed the '905 patent to be 'wholly or partly inoperative or invalid by reason of me claiming less than I had the right to claim.'" Naturally, Obzilla stomped on it, with the help of three interested potential infringers slipping the PTO previously uncited art. Not content to have his patent act as a rug, Mettke persisted. The stomping never stopped.

In re Richard P. Mettke (CAFC 2009-1125) non-precedential

Richard P. Mettke appeals the decision of the Board of Patent Appeals and Interferences affirming the examiner's rejection of the sole remaining claim (claim 6) in his application for reissue of U.S. Patent No. 5,602,905. Ex parte Mettke, Appeal 2008-0610 (B.P.A.I. Sept. 30, 2008). The Board concluded that claim 6 would have been obvious in light of any of several different combinations of references, and was therefore properly rejected under 35 U.S.C. §103(a).

Obviousness is a legal conclusion based on underlying findings of fact. In re Thrift, 298 F.3d 1357, 1363 (Fed. Cir. 2002). The factual inquiries relevant to obviousness are set forth in Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966), and include (1) the scope and content of the prior art, (2) the differences between the prior art and the claims, (3) the level of ordinary skill in the relevant art, and (4) any objective indicia of non-obviousness such as commercial success, long felt need, and failure of others.

Mettke apparently hadn't heard the shout of KSR: "A court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions."

Mr. Mettke criticizes the Board's finding that the field of endeavor is "pay-for-use public communication terminals," arguing that this field was too broad and led the Board to consider non-analogous art.

But the prior art was analogous, even as four references were used for invalidation. The capper was "article by Rawn Shah titled 'Suggestions for Information Kiosk Systems using the World Wide Web.'"

The Board found that the Shah reference teaches the addition of the sole remaining element: "means for accessing the Internet." Shah describes "a kiosk based information system using the World Wide Web on the Internet as an interface."

Mettke, delusional, argued otherwise.

Mr. Mettke argues, as he did before the Board, that the Shah reference does not disclose "accessing the Internet" at all. He contends that the PTO "grossly misinterpret[ed] the Shah prior art," and that Shah "teaches away from accessing the Internet." Petr.'s Br. 6. He contends that Shah's discussion of the World Wide Web is limited to the use of a Web "browser" to access only limited information on a "standalone network," meaning one that is not connected to the larger Internet. The Board considered these contentions, and rejected them based on the text of the Shah reference, finding that Shah plainly discloses an information kiosk that uses the "World Wide Web on the Internet as an interface." Board op. at 22 (quoting Shah, abstract). Shah mentions access to the Internet expressly and repeatedly, as the Board explained. Substantial evidence supports the Board's reading of the content of the Shah reference and its application, as analogous art, to claim 6.

Mettke got a response about hindsight, but not the one hoped for.

Mr. Mettke contends the Board engaged in hindsight analysis, using his patent as a blueprint for the combination of elements from various sources. Mr. Mettke is correct that the selective hindsight combination of references that show various elements of the claim generally does not suffice to establish obviousness. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) ("[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.").

But the Board's analysis included more than a combination of disparate references disclosing different elements, for the Board explained why Shah teaches the very combination of elements that Mr. Mettke sought to claim. The Board found that Shah does not merely disclose "accessing the Internet" as a general matter; Shah expressly teaches Internet access in connection with information and communication kiosks--the kinds of public communication terminals described in Exhibits E and F. Shah provides explicit support for the Board's finding that a person of ordinary skill would have been motivated to modify existing information kiosks or terminals to provide access to the Internet.

The final cup of weak tea was arguing non-obviousness because of commercial success.

Mr. Mettke also states that "over 50% of all [now-existing] kiosks have all of the elements" of claim 6, suggesting commercial success. The Board found that Mr. Mettke failed to establish a "nexus" between this asserted wide use and his invention. See In re Paulsen, 30 F.3d 1475, 1482 (Fed. Cir. 1994) ("When a patentee offers objective evidence of nonobviousness, there must be a sufficient relationship between that evidence and the patented invention."). We note that when the commercially successful device is the claimed invention itself, there is a presumption of nexus. See Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988). However, the Board found that Mr. Mettke failed to meet his burden because he has not shown that the alleged commercial success is due to the claimed invention. We conclude that the evidence of obviousness was not, in this case, rebutted by the asserted commercial success.

Affirmed.

Full post as published by The Patent Prospector on June 25, 2009 (boomark / email).