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October 22, 2017


I do not see any reliance on the notion of "teaching away" in the Report above, or in the text of the Decision. But it's there though, isn't it? See the para that begins "The district court's reliance onm hindsight is further underscored by....."

I mention this because of the discussion of what "teaching away" means, on another well-known patent law blog recently.

Where I write from, Europe, we don't do "teaching away". We do recognise, however, a "technical prejudice" against that which is claimed can evidence non-obviousness.

There are tons of reasons why an individual patent application might "teach away" from something, and few of them prove that any "technical prejudice" exists. So I'm deeply sceptical that one patent publication "teaching away" is a solid enough reason for deciding that the thing claimed is not obvious.

Thanks, Max - while "teaching away" is one way of making the point, the better characterization is disparagement (a higher order form of teaching away). The distinction is that while a reference can say that one thing is better than another, or that a combination is unlikely to work (teaching away), here the portion of the '015 PCT quoted in the post goes further (in my opinion). A judgment call.

Thanks for the comment

Kevin thanks. The notion of "disparagement" I find useful to discuss. Call me cynical, but it leaves me even less of a fan.

I want (if it is possible) to patent ALL practical ways of implementing a concept, the concept as such being unpatentable. Say, for example, that I can implement with an "odd number" implementation or with an "even number" implementation. I write two patent applications, one extolling the odd number solution. I deliberately include all the disparagement of even numbers that I can dream up. My other patent application extols the even number solution to the technical problem, and persuasively disparages the odd number solution.

Each patent application helps the other to issue. Bingo!

One can implement PTCA (known as such) with a balloon that is non-compliant, or with a compliant balloon. Perhaps then two patent applications are called for, one of which disparages compliant balloons, the other non-compliant balloons. Who amongst my competitors does not infringe one or other of my patent Tag Team?

Or a medication-dispensing ring. Two options. One chamber for the medication. Or two. Use disparagement to cover both options?

These are thoughts that leave me leary of building a case of non-obviousness around statements in a published patent document that can be fairly characterized as disparaging.

As you say, a judgment call. Is it plausible that the notional PHOSITA "disparage" the solution to anything like the same extent?

Well, Max, disparagement isn't just name calling - there needs to be some disadvantageous property (inoperability is usually the basis) for the alternative. It is also used to greatest effect as here (and in your example) when there is a dichotomy - one or two, black or white, odd or even - and it has the effect (as here) of precluding the alternative. So that if the accused infringer used two chambers the patentee would be estopped from raising a successful infringement action (which is why it is a tricky strategem).

As for your example, in the US the patentee suing on either patent would have the statements in the other patent raised in the litigation and might be guilty of inequitable conduct.

Thanks for the conversation

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