Monday, April 30, 2007

KSR v. Teleflex: it's not bedtime for Bongso

Potential bad news for Thomson / WARF resides in the text of the Supreme Court decision in KSR v. Teleflex: "The same constricted analysis led the Court of Appeals to conclude in error that a patent claim cannot be proved obvious merely by showing the combination of elements was obvious to try. When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show it was obvious under section 103."

Also: "Rigid preventative rules that deny factfinders recourse to common sense, however, are neither necessary under our case law nor consistent with it."

One notes that "common sense" becomes an excuse not to write down a reason, or a substitute for a reason (e.g., common sense shows that a person of ordinary skill would have combined reference A with reference B.) Whose common sense?

On the role of Ariff Bongso in stem cells -->

Embryonic stem cell pioneer chose to publish, not patent


Another college newspaper writer fired for plagiarism

The scotusblog has some posts on KSR v. Teleflex:

Solveig Singleton, titled: KSR v. Teleflex: Workmanlike, Yet Frustrating, which includes the text:

In a nutshell, a unanimous Court overturns the appellate decision on the ground that the test of “obviousness” used below misunderstood the proper use of prior art in considering the validity of a combination patent; and, more generally, the Court of Appeals was too rigid and did not allow the fact finder recourse to common sense. The Court recognized the risk that too many inventions would seem “obvious” by hindsight, but said only that the appellate court took the wrong approach to the problem.

IPBiz query: did the Supreme Court say the CAFC misunderstood the use of prior art?

Singleton also wrote: A more narrow opinion that still addresses the substantive issue of obviousness is hard to imagine. There was little guidance from the Court on the systemic issues raised by amici and the parties, such as evidentiary standards, presumptions of validity, how or why to improve the examiner’s and the courts’ access to the opinions of “persons of ordinary skill in the art,” and so on. The Court notes that the question of obviousness is a question of law (and therefore is for the judge to determine), but at the same time recognizes that far more will usually be needed to resolve each question than the mental processes of the judge, informed by common sense. Here the Court’s failure to give more direction is most frustrating. Treating obviousness as a question of mixed law and fact or even a matter for “judicial notice” might point to more concrete solutions to the problem (setting aside the appalling prospect of the question going to the jury).

IPBiz notes that the nonprecedential KSR v. Teleflex CAFC decision had nothing to do with evidentiary standards or presumptions of validity. It was about whether or not one had to write down a reason for combining references. Now one sees one doesn't have to write down a reason. One can say "common sense indicates one of ordinary skill would have combined these references."

Dennis Crouch wrote: Instead, the opinion appears to simply refine the particulars of how prior-art can be combined and when a "combination patent" will be seen as obvious. Inventions that introduce the world to entirely new concepts and elements will continue to be more valuable.

But let's go back to Thomson's '780 patent on the isolation and maintenance of human stem cell lines. It is undisputed that Thomson was the first person to isolate and maintain human stem cell lines. Does this qualify as introducing to the world an entirely new concept? Jeanne Loring would say "no." Terri Somers would say "no." Ariff Bongso recognized one could get human stem cells from blastocysts, and, separately, others had isolated and maintained stem cell lines from other animals such as mice. Is Thomson's patent just a combination patent now susceptible to the new "obvious to try" standard? Human stem cells were available in blastocysts AND recipes for isolating and maintaining (non-human) stem cells were available in "recipes." Obvious to try? Was there a market pressure to solve a problem (isolate and maintain human stem cells) and were there are a finite number of identified, predictable solutions (recipes)? Hmmm, in a world in which there are no human stem cells, is there a market pressure to isolate and maintain them? Probably not. In a world in which there are no airplanes, is there a market pressure to develop three dimensional control systems for airplanes? No. But what if someone creates a prize to do something that has not yet been done? Is that market pressure?

***See also

Group calls for WARF director's resignation from Patent Office board which contains the text:

In a letter to Gulbrandsen, the Foundation's John Simpson wrote: "As WARF's managing director you clearly have a vested interest in the Patent Office's operations as it contemplates rejecting those over-reaching patents. Already an initial office finding has denied all of your claims. While the cases are pending it is inappropriate for you to have such direct access to the highest levels of PTO decision making."


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