Wednesday, November 29, 2006

KSR: can one have a settled expectation in gobbledygook?

Will the Supreme Court see new light or dark clouds in reviewing KSR v. Teleflex?

The Chicago Tribune ran a Bloomberg story on KSR which included the text:

[A] challenger seeking to invalidate a patent on grounds it simply combined previous inventions must prove there was a "teaching, suggestion or motivation" to put those earlier inventions together.

"It is misleading to say that the whole world is embraced within these three nouns," Justice Antonin Scalia said. "This is gobbledygook. It really is. It's irrational."

IPBiz notes that the --teaching, suggestion, or motivation-- test is but PART of the obviousness inquiry, so the CAFC is NOT embracing the "whole world" within these three nouns. The Trib notes a ruling is expected in July 2007.

The LA Times started off with the text:

The Supreme Court is wrestling with an abstract case involving automobile gas pedals that could apply the brakes to the dramatic growth in patents issued nationwide.

Frustrated justices Tuesday flipped through engineering diagrams as they pondered a question at the heart of many patent disputes: Is the invention truly unique or just an "obvious" recombination of existing components?

IPBiz notes that writer Jim Puzzanghera really missed the boat in thinking this was an "abstract" case. First, this is a real case, with real parties. Second, this case was selected by the motivation test opponents because of the EASE in visualizing the technology involved. In oral arguments in Festo (involving a piston used for example for submerged animals in DisneyWorld, which technology got into aspects about magnetic susceptibility), the justices completed avoided the technology, and even confessed they did not understand it. NOT SO IN THE KSR case. The justices in KSR can understand gas pedals and computer controls. One should remember the oddity in KSR that the Supreme Court is reviewing a NONPRECEDENTIAL case; there was no new law in KSR, and the issue in the lower courts was that the trial court did not articulate its reasons for finding motivation.

The LATimes quoted a different part of Justice Scalia's remarks: "Does it make sense to assume patents are valid that have been issued under an erroneous test for 20 years?" One separately asks: does it make sense for the Supreme Court to change the obviousness inquiry set up by the CAFC when the Supreme Court has had numerous opportunities since Sakraida (aka "that cow shit case") to review the test?
For example, In re Dillon, 919 F.2d 688, 692, 16 USPQ2d 1897, 1900 (Fed. Cir. 1990) (in banc), cert. denied, 500 U.S. 904 (1991).

At the end of the day, the "settled expectations" issue will keep the Supreme Court from changing the obviousness inquiry in a major way. Recall what Justice Ginsburg said in Hilton Davis, which was embraced by the entire court in Festo. [Ginsburg, concurring in Hilton Davis: "The new presumption, if applied woodenly, might in some instances unfairly discount the expectations of a patentee who had no notice at the time of patent prosecution that such a presumption would apply....Years after the fact, the patentee may find it difficult to establish an evidentiary basis that would overcome the new presumption." (emphasis added). Festo: The Court of Appeals ignored the guidance of Warner-Jenkinson, which instructed that courts must be cautious before adopting changes that disrupt the settled expectations of the inventing community.

For other discussion, see

See also the discussion Supreme Court: Current Test of Obviousness is "Gobbledygook" at Patently-O. ["Much of the oral argument was filled with an attempt to simply understand the TSM test, and to figure out what is meant by a “motivation.” If they cannot figure-out the test, they would likely completely trash-it as unworkable. Of course, by the time the opinion is penned, they will understand the current test and the test will not be scrapped as a whole. Rather, they will follow the Government’s suggestion that TSM continue to be used as a “valid means of proving obviousness.” In addition, however, flexibility will be added to allow for other ways of determining nonobviousness."] IPBiz query: If added flexibility means a lowered threshold to prove obviousness (a higher standard for the patentee to meet to establish nonobviousness), who would bother to use the motivation test to invalidate a patent when easier ways are available? Why wouldn't the patent litigation floodgates open?


Post a Comment

<< Home