Disney Enters. v. Rea

A patent claim is invalid for obviousness where it merely combines technologies existing at the time of invention.

Opinion (Brinkema): Disney Enterprises, Inc. (“Disney”) brought a civil action seeking reissue of its Patent No. 5,963,915, covering the use of secure persistent cookies in Internet commerce. Two years after the patent issued, the inventor filed an application to reissue the patent with broader claims. Following 10 years of administrative prosecution, the Patent and Trademark Office issued a final rejection of all patent claims finding them obvious in light of prior art. The reissue process is a method for correcting or amending a patent that has already been issued. The application cannot add new matter to the patent, but the application is reviewed under the same standards as a new patent application and all of the patent claims can be rejected whether they were in the originally issued patent or not. A patent's claims are obvious if the claimed invention would have been obvious at the time of invention to a person having ordinary skill in the relevant art. Disney argued that its claims were distinguishable from the prior art relied on by the PTO because that art claimed the use of session identification and therefore was only valid for a single browsing session whereas Disney's patent claimed the use of persistent cookies transmitted via SSL which would be valid for multiple sessions. The court disagreed with Disney's interpretation of the limits of the prior art, and held that the alteration of the method claimed in prior art to make use of technologies existing at the time invention would have been obvious to a person with ordinary skill in the art at the time of invention. Because Disney's patent combined existing technologies to avoid a problem in the prior art it was a “predictable use of prior art elements according to their established functions,” and was, therefore, obvious. Because Disney was not able to raise new evidence or arguments capable of establishing the right to have its patent reissued, the District court found for the PTO.