Monday, November 30, 2009

KSR v. Teleflex: story-telling is nice, but...

Back in June 2007, IPBiz noted the response of one practitioner to KSR v. Teleflex was that KSR required the patent advocate to tell an extremely cool story to the USPTO (or to the court). Flash forward to the BIO Corporate Counsel meeting in DC in 2009, and someone was making exactly the same point.

The problem is that telling stories, and receiving them, is a highly subjective matter. This point was emphasized in a recent post on politico about President Obama:

Presidential politics is about storytelling. Presented with a vivid storyline, voters naturally tend to fit every new event or piece of information into a picture that is already neatly framed in their minds.
No one understands this better than Barack Obama and his team, who won the 2008 election in part because they were better storytellers than the opposition. The pro-Obama narrative featured an almost mystically talented young idealist who stood for change in a disciplined and thoughtful way. This easily outpowered the anti-Obama narrative, featuring an opportunistic Chicago pol with dubious relationships who was more liberal than he was letting on.
A year into his presidency, however, Obama’s gift for controlling his image shows signs of faltering.

One notes that the regime that KSR v. Teleflex pushed upon the patent community may not be a desirable one, in that it is a framework that favors subjectivity over objectivity. What is "common sense" and a good story to one person, is not necessarily so to another.

See also

KSR: the need to tell an extremely cool story

**UPDATE on 1 Dec 09.

There is a nice comment by "step back" below. Unfortunately, I think it misses the point of those talking about "story telling" as a response to KSR. In the case of patent applicants before the USPTO (or Obama before the general population), there is a very subjective element that goes beyond the evidence on the table.

IPBiz agrees that there was a lot going on in KSR that most people do not discuss. First, it was a non-precedential case of the CAFC, not the sort of thing that the Supreme Court typically reviews. Second, the substantive issue of obviousness was not even at issue in the case; the CAFC did not hold that the claims were, or were not, obvious. Third, there was a lot of discussion of expert testimony, with the CAFC believing more in patent applicant's expert and the Supreme Court going more with the other side's expert. The facts were pretty clear. Story telling was the issue.

Separately, first formed opinions are tough to break. The Supreme Court went into KSR with some strong beliefs (eg gobbleygook) that may, or may not, have existed by the end of the case. Along this line, compare Justice Scalia's discussion of text in the Hatch-Waxman Act in Merck v. Integra to Justice Scalia's earlier opinion.


Blogger Step Back said...


The presentation of a non-obviousness case before the USPTO is no different than the presentation of any fact-based story in front of another administrative agency.

The substantial evidence rule controls.

Unless the Applicant places "evidence" into the record, the Examiner's narrative stands as the unchallenged story.

It is all too common to see Applicants resorting to argument of counsel as the way to present their story. Argument of counsel is not evidence and thus can be totally discounted. At the appeal level, the CAFC has no choice but to affirm the USPTO ruling due to the substantial evidence rule.

KSR had a very unique story line. Problem is that few pay attention to that minor detail.

9:30 AM  

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