Friday, November 24, 2006

Lemley switches sides in KSR v. Teleflex

In IPLB, Xenia P. Kobylarz discusses Mark Lemley's change in position on obviousness in KSR v. Teleflex:

In June he and 23 other law professors urged the Supreme Court to hear KSR's appeal. Then, in October, he and four different law professors signed on to an amicus brief siding with Teleflex. What happened? Lemley says that after he filed his June certiorari petition, the U.S. Court of Appeals for the Federal Circuit issued three decisions that made him change his mind. "If the Federal Circuit had issued those decisions two years ago, I would not have supported KSR's petition for cert," he says. He also notes that two new law review articles -- written by two of the professors who joined him on the Teleflex brief -- made him realize that the status quo doesn't need fixing.

The KSR case initially attracted the attention of reform-minded patent professors like Lemley, who believed that the Federal Circuit had been too loose with an important standard -- that patents should not cover obvious inventions. At the district court, KSR had argued that Teleflex's patent should be invalidated because it covered an obvious invention. Neither gas pedals nor electronic sensors are new technology, KSR argued. There was nothing innovative in combining the two. The court agreed, but the decision was reversed on appeal. The Federal Circuit ruled that because no one had suggested combining these two technologies in any written prior art, the invention was not obvious.

In their petition, Lemley and company argued that by relying so heavily on written prior art, the Federal Circuit had lowered the patent bar too far. Sometimes an invention is so obvious that no one ever even bothers to write about it, they said.


Lemley changed his mind about this after reading a paper written by University of Richmond School of Law professor Christopher Cotropia, who found that the court does consider sources besides written prior art. Cotropia, who was a student of Lemley's at the University of Texas School of Law and cowrote the Teleflex brief, analyzed three years' worth of Federal Circuit decisions involving obviousness. (The Notre Dame Law Review plans on publishing his article in early 2007.) Lemley also looked at research done by Gregory Mandel, a professor at Albany Law School in New York. Mandel had 247 law student volunteers pose as jurors, and he split them into two groups. One group was told about an invention, and then learned the history of its discovery. This group was much more likely to see an invention as obvious. (It's like being told Bruce Willis's character is a ghost before sitting down to watch "The Sixth Sense.") The other group learned the invention's history first, and was less likely to see the invention as obvious.


KSR's lawyer James Dabney, a partner at Fried, Frank, Harris, Shriver & Jacobson, says that the change doesn't weaken his client's position at all: "The solicitor general of the United States and the Patent and Trademark Office have filed a brief that strongly disagrees with Mr. Lemley's newly expressed views," he wrote in an e-mail.


The motivation test of the Federal Circuit is designed to combat hindsight determinations of obviousness, and is at issue before the Supreme Court.

IPBiz notes that in an article in the Stanford Law Review last year, Mark Lemley proclaimed Gary W. Boone to be the inventor of the integrated circuit.


Lemley is a patent consultant for Barack Obama. Obama is not adverse to switching positions either, as on off-shore drilling. Lemley and Obama get on both sides of an issue.


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