Tuesday, October 17, 2006

IBM and AARP on KSR v. Teleflex

The KSR v. Teleflex case on obviousness in patent law has attracted a lot of attention. Many people think KSR v. Teleflex is the most significant case in patent law in recent years.

The IBM brief (in favor of neither side) lays out the issue:

Whether the Federal Circuit erred in holding that a claimed invention cannot be held "obvious," and thus unpatentable under 35 U.S.C. § 103(a), in the absence of some proven "'teaching, suggestion, or motivation' that would have led a person of ordinary skill in the art to combine the relevant prior art teachings in the manner claimed."

The IBM brief proposes a test: retain the basic teaching-suggestion-motivation test, but apply a rebuttable presumption that elements found in multiple prior art references would be combined by the skilled artisan, when all of the elements are found in references within the "analogous art." Analogous art is a well-known
and long-established concept in patent law referring to prior art derived
from the field of the problem or invention; it already defines boundaries on the
scope of prior art considered for non-obviousness determinations. See infra pp.
18-19. A patent applicant can narrow and focus the scope of the art to which the
presumption applies, moreover, by narrowing and focusing the scope of the
claimed invention during the patent application process. The applicant
can also rebut the presumption with evidence that a skilled artisan would not
have been motivated to combine the references.

In other words, there will be presumed motivation to combine different references (to meet different claim elements) if the references are in the appropriate analogous art, and it will be up to the patent applicant to present evidence to negate the presumption. Currently, it's up to the USPTO to show there is motivation; in the IBM world it would be up to the patent applicant to show there is no motivation. Where's Abraham Lincoln (a man cannot prove a negative) when you need him?

In footnote 3, the IBM brief cites the Kotzab case to support the assertion: Rather, the Board must point to some concrete evidence in the record in support of these findings.").

footnote 3 --> See In re Lee, 277 F.3d 1338, 1344 (Fed. Cir. 2002) (where the Board
of Patent Appeals and Interferences "rejected the need for 'any specific
hint or suggestion in a particular reference' to support the combination of...
references" and relied instead on the common knowledge of those skilled
in the art, the Federal Circuit held that the Board had omitted from its
analysis "a relevant factor required by precedent [that caused it to commitA] both
legal error and arbitrary agency action"). See also In re Kotzab, 217 F.3d
1365, 1370-71 (Fed. Cir. 2000); Winner Intl Royalty Corp. v. Wang, 202 F.3d
1340, 1348-49 (Fed Cir. 2000).

IPBiz referred to In re Kotzab twice in May 2005. Google did not bother to index either one.


In re Kotzab, 217 F.3d 1365, 1369 (Fed. Cir. 2000) ("The very ease with which the invention can be understood may prompt one to fall victim to the insidious effect of a hindsight syndrome wherein that which only the invention taught is used against its teacher." (internal quotations omitted)).


The AARP/PubPat brief (which did NOT cite Kotzab) stated the following:

A decision in this case will determine whether a claimed invention,
which involves a combination of existing technological knowledge, can be
"obvious" and therefore unpatentable under 35 U.S.C. § 103(a) without proof of some
prior "teaching, suggestion or motivation." The issue is important in the
prescription drug arena because combination drugs either have been or are being
developed for a multitude of diseases. Combination drugs frequently receive new
patents which can eliminate generic entrants from the market for many years,
resulting in a higher cost for prescription drugs.

The AARP did cite Sakraida: This Court has held that a patent that "simply arranges old elements with each performing the same function it had been known to perform" is not patentable even if the combination produces "a more striking result
than in previous combinations." Sakraida v. Ag Pro, Inc., 425 U.S. 273,
282 (1976).

Boogeymen to AARP: The Federal Circuit has outright dismissed this Court's standard for determining the validity of a combination patent. See, e.g., Medtronic,
Inc. v. Cardiac Pacemakers, Inc, 721 F.2d 1563, 1566 (Fed Cir. 1983) (holding
that there is no statutory basis for identifying "combination" patents and
applying a more stringent obviousness test to such patents). By imposing its own
"teaching-suggestion-motivation" test instead, the Federal Circuit has
permitted claims drawn specifically to what this Court has prohibited--a
combination of two old elements with the same function as the individual
elements. See Knoll Pharm. Co. v. Teva Pharm. USA, Inc., 367 F.3d 1381 (Fed. Cir.

The In re Lee whipping boy is brought out. The PTO cannot even use "common sense" to make an obviousness rejection. See e.g., In re Lee, 277 F.3d 1338, 1345 (Fed.
Cir. 2002) ("'Common knowledge and common sense,' even if assumed to derive from
the agency 's expertise, do not substitute for authority when the law requires


Blogger Lawrence B. Ebert said...

The relationship of a the presence of a "too lenient" obviousness requirement and the presence of "too many" bad patents is not clear.

From the PENNumbra:

An alternative line of attack deployed by Professor Strandburg is that, even if doctrinally sound, the TSM analysis results in a legal framework for obviousness that sets the bar "too low." In making this argument, Professor Strandburg cites what she concedes is not definitive evidence: empirical studies suggesting that the PTO issues too many bad patents and that the role of obviousness in litigation has been diminishing.

First, on the sense that the bar is set too low: There can be little doubt that the PTO does not do as good a job as it should in evaluating patent applications, and that too many patents issue that do not meet the legal standards for patentability.

The empirical studies of Quillen and Webster on patent grant are highly questionable, and do not support the bad patent / bad job hypothesis.

3:45 PM  

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