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An inventive concept dies and becomes the “spirit of the invention”

In NCS v Kobold, the Court explained that the inventive concept of a patent is not the “spirit of the invention” as determined with hindsight. Courts have recently grappled with how to identify the inventive concept of a patent. In Shire, the Court of Appeal clarified that the inventive concept can be based on the claims as informed by the specification of the patent.

NCS sued Kobold for patent infringement and Kobold responded by asserting that NCS’s patents were invalid. Kobold also counterclaimed, alleging that NCS had infringed its 830 Patent.

Mr. Lehr, an expert for the Plaintiff, identified the inventive concept of the 676 Patent as including “active debris relief” in connection with a bottom hole assembly. Notably, the term “active debris relief” appeared only once in the disclosure of the 676 Patent and the claims referred to “debris relief” as opposed to “active debris relief”. The Court found that “active debris relief” was not the inventive concept but instead the “spirit of the invention” when seen in hindsight. The Court noted that the Supreme Court had rejected the “spirit of the invention” approach in Free World Trust.

Instead, the Court adopted the inventive concept identified by the Defendants’ experts.  Mr. David identified the inventive concept as a bottom hole assembly that had been modified to include debris relief features. A second expert for the Defendants, Mr. Chambers, highlighted that the 676 Patent did not introduce new components to a bottom hole assembly; it simply added debris relief features to existing components. The inventive concept was therefore to “debris relief” and not active debris relief.

Having identified the inventive concept of the 676 Patent as the incorporation of debris relief features into various BHA components, the Court proceeded with its obviousness analysis. Ultimately, the Court concluded that the bottom hole assembly and enhancements aimed at achieving debris relief were obvious in view of the prior art.

A copy of the decision can be found here.