Tuesday, November 28, 2006

Obviousness: KSR today, Sakraida, "that cow shit case," yesterday

Tony Mauro includes the following in his discussion of today's oral arguments in KSR v. Teleflex:

[According to the book, The Brethren,] a 1975 patent case named Sakraida v. Ag Pro was labeled the "cow shit case" among justices and clerks, only partly because it involved the patentability of a system used to clean the floors of dairy barns.

Chief Justice Warren Burger assigned the case to his liberal nemesis, Justice William Brennan Jr., instead of John Paul Stevens, then the Court's junior justice. Brennan was insulted, according to the book, and he wrote the decision himself to spare his law clerks from the humiliation of getting involved. The ruling, which struck down the patent because of obviousness, is cited in numerous briefs in the case now before the justices.

Mauro's article does touch on the stability issue, a point made by Justice Ginsburg in Warner-Jenkinson v. Hilton Davis, and later re-enforced by the Supreme Court in Festo:

Because "many millions" of patents were granted under the disputed [motivation] standard and patents can be challenged at any time, Goldstein says, "If the Supreme Court does decide to make a substantial change, it will call into question innumerable patents." [Goldstein is a contributor to Legal Times.]

The need to have "settled expectations" is likely to keep the Supreme Court from strongly changing the motivation test of the CAFC. If not so, the Supreme Court would be guilty of the same expectation-bashing in KSR for which it chastised the Federal Circuit in Festo.

Mauro talks about Mark Lemley's change of sides:

In another sign of the legal community's ambivalence about the case, Stanford Law School professor and leading patent scholar Mark Lemley, in effect, switched sides. At first he joined petitioner KSR in urging the Court to review the Federal Circuit's standard. But after seeing signs of flexibility in some recent Federal Circuit rulings, Lemley changed his mind and joined a brief siding with Teleflex. He now defends the standard as "the best we've got right now."

Mauro talks about James Dabney:

KSR's Dabney sniffs that "you should examine with care the professional interests" of the leaders of the bar groups, adding that "the briefs don't reflect the views of all the members." In an acidic footnote in one of his briefs to the Court, Dabney also expresses wonderment about the bar's interest in stability "in view of the enormous fees that litigation of invalid patent claims can generate."

IPBiz notes that the patent litigation business would be greatly enhanced by a change of rules to determine obviousness, as there would be more incentive to litigate patents newly made obvious by a changed standard. Dabney's footnote doesn't pass the straight face test.

Mauro talks about some facts of the case:

The case in which the Court finally agreed to review it was an unpublished opinion issued in January 2005. At issue is a Teleflex patent issued in 2000 for an adjustable gas pedal for cars, designed to accommodate what KSR's Dabney describes as "the five percent female" -- petite-sized women who need to reach the pedal without getting too close to the steering wheel's airbag. Teleflex sued competitor KSR in the Eastern District of Michigan for patent infringement. KSR countered by challenging the validity of the patent as a too-obvious combination of existing elements. The district court agreed that at least one part of the patent was invalid because it was obvious.

But the Federal Circuit reversed, finding that KSR had not shown enough evidence that because of prior "teaching, suggestion or motivation," the patented product was an obvious development that made it undeserving of a patent.

IPBiz notes that an important point to note is that the Supreme Court here is reviewing a NONPRECEDENTIAL opinion. It is puzzling that the Supreme Court would analyze a case that cannot be cited for precedent. Separately, the CAFC did not make a substantive ruling, but merely sent the case back for the district court to present evidence of motivation to combine the references. For the law, the CAFC cited the Kotzab case.

For more on the claim in question, look here.

Look here for a discussion of the brief of the 24 law professors and the In re Lee case.

Look here for the issue of "settled expectations in gobbledygook."


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