Monday, January 18, 2010

The temporal dimension of obviousness

In a post titled Was the Federal Circuit Feeling Guilty Over KSR? Study Suggests They Were, the 271Blog discusses material by one Ali Mojibi which discussed obviousness determinations by the CAFC during three time intervals:
before the Supreme Court granted cert to KSR, after the Supreme Court decided KSR, and the period in between.

The 271Blog wrote: Here, Mojibi finds an interesting statistic: during the period when KSR was pending, the Federal Circuit found patents obvious almost 70% of the time and non-obvious 26% of the time. [Parenthetically, IPBiz notes that it is claims, not patents, which are found obvious or nonobvious, and one wonders how "almost 70%" and 26% add up to 100%.]

The 271Blog quotes text from Mojibi:

This result is quite unexpected because granting cert does not change the state of the law at all, and the stark contrast in percentage of patents being held invalid before and after grant of cert cannot be explained by any substantive change in the law. Rather, the data seems to indicate that the Federal Circuit perceived the Supreme Court’s decision to hear KSR as a nod of approval to the critics of the Federal Circuit, which alleged that the appeals court was too pro-patent.

IPBiz suspects the primary objective of the CAFC in the interim time period was to clarify its position on obviousness, rather than to jack the numbers. In fact, neither tactical objective had much impact on the Supreme Court.

One does recall that the initial CAFC decision in KSR v. Teleflex was non-precedential and did not involve a ruling on whether the claims were, or were not, obvious.

The 271Blog did not mention text in the Mojibi abstract:

Together, the results of the study signify the positive fact that the Federal Circuit is aware of and sensitive to criticism by members of the patent bar and the academia. But the results also cast doubt on whether the text of judicial opinions is a reliable source of figuring out what the law truly is.

**Separately, on obviousness in Australia, from PatentBaristas:

Firstly, not all prior art references are citable. Rather, in order to be citable, a prior art reference must firstly be shown to be a piece of prior art information that the skilled person could have been reasonably expected to have “ascertained, understood, and regarded as relevant”.

Secondly, since the landmark High Court decision in Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59, “obvious to try” does not make an invention obvious in Australia.


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