Saturday, June 25, 2005

Amicus brief by Microsoft et al. in KSR v. Teleflex

The Patently-O blog presents a copy of an amicus brief by Cisco, Microsoft, Hallmark, V.F., and Fortune Brands in favor of cert in KSR v. Teleflex.

The filing parties represent companies who make actual products and who have been adversely affected by being defendants in patent litigation. As with the brief of the 24 professors in KSR v. Teleflex, the present brief attacks the motivation requirement of the CAFC in obviousness determinations. At page 5: "amici have experienced first-hand the stifling effect of the motivation test." By this, they mean that they have failed to invalidate through obviousness patents asserted against them because of not meeting the motivation requirement of the test.

At page 7 of the brief, there is a discussion of "patent portfolio companies" who do not sell products, and thus are not interested in cross-licensing.

The brief states at page 8: "Ultimately, it is the public that is the loser when the patent laws are diluted in favor of obvious patents."

At page 10 and following, the brief suggests that several Supreme Court cases would have been decided differently had the CAFC motivation test been applied. These include Graham itself, Dann v. Johnston, and four cases decided BEFORE obviousness was codified within 35 USC 103 (in the 1952 patent act).

The brief does NOT cite to recent CAFC cases on obviousness, with the exception of Group One v. Hallmark, 407 F.3d 1297 (CAFC 2005) [the next most recent cases date to 2000]. The 2005 case involves one of the filing parties (Hallmark) and for which there will soon be a petition for cert filed (see page 16 of the amicus brief). Although the brief does mention the brief of the 24 law professors, this brief does not appear in the Table of Authorities.

As with the brief of the 24 professors, the current brief complains about "what is wrong" but does not present any suggestions for what should be done. At best, the brief argues that the CAFC "should hew close to this Court's precedent."

As a separate matter, if the position of the amici were correct [that the basic law on obviousness is wrong], then the proposal to introduce an opposition mechanism (a procedure which would rely on the current law] is irrelevant. Further, all the complaints about bad "patent quality" at the PTO might be questioned if the PTO is in fact correctly enforcing current law.

Of the legal issue itself, it is significant to note that neither the brief of the 24 professors nor the current brief cite the numerous recent cases of the CAFC on obviousness. Further, although Microsoft, and the other amici, lament recent "obvious" patents, there has been a lot of criticism that Microsoft is obtaining "obvious" patents. They are complaining about what they themselves may be doing.


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