Friday, December 01, 2006

Future KSR decision patterned on eBay model?

Looking at the details of the transcript in KSR v. Teleflex (available, for example, at thefireofgenius), one sees a possible resolution of the case along the lines of an inquiry made by Justice Kennedy [Tr. p. 46: "Would you have any objection to an opinion like that?" Goldstein: no.] This type of resolution would be along the lines of the eBay decision, in which general principles are stated, but the Supreme Court does not lay out the specifics. Other formulations of obviousness, consistent with the general principles, might be tested in the lower courts. IPBiz does not see a big change in obviousness doctrine coming here.

IPBiz, however, was "shocked" at the references to the Winslow case, the principles of which were negated by Judge Rich in Kimberly-Clark Corp. v. Johnson & Johnson, 745 F.2d 1437, 1453-54 (Fed. Cir. 1984). Look at a previous IPBiz discussion. Lawyers (and others) can cling to a striking image, long after the image has vanished. Just think about the persistence of the 97% patent grant rate, which worked its way into an eBay Supreme Court brief long after the validity of the 97% number was demolished.

The obviousness debate has been one prong of the reform movement, with another prong being the patent quality debate. In obviousness, one blames the CAFC for bad law, while in quality, one blames the USPTO for bad execution of the law. As (among others), Judge Rader has pointed out, the judicial record doesn't support the patent quality debate. In the KSR oral argument, neither Dabney nor Hungar had a good answer for why the patent in question wasn't simply re-examined.

At various points, Goldstein tried to remind the Court at what was really at issue in the case: that the District Court didn't make findings about motivation. The CAFC never passed judgment on whether the patent was obvious or not. Of course, no one mentioned that the case was nonprecedential. As a (humorous) side query, does the Supreme Court violate local appellate rules in citing a non-citable non-precedential case?

For an earlier discussion of whether or not one can have settled expectations in goobledygook, look here. The answer is (probably) "yes."


The KSR case illustrates a difficulty in implementing patent reform through litigation. Mr. Goldstein represents a specific client, rather than the "Coalition to Prevent Hindsight Bias." Thus, he will present (and did present) arguments to allow his client to win, without invoking the motivation test. In an abstract formulation wherein A and B are prior art teachings, and C is the claim at issue, Mr. Goldstein did argue that

A + B < C

in response to Mr. Dabney's argument that

A + B = C.

If (hypothetically) the Supreme Court did formulate an abstract test of the form

Does the combination (aggregation) A + B = C,

then there could be an avalanche of litigation.

For a moment, go back to the Wright Brothers. Their invention was three-dimensional control of flight (not powered flight) and the application was filed months before powered flight was achieved in December 1903. At the time of filing, two-dimensional control was known, and so were what would later be called ailerons.

Query: does (two dimensional control) + (ailerons) = Wright Brothers?

Or take an invention that wasn't at issue.

Query: does (three dimensional control) + aluminum engine = powered flight

As a separate thought, a significant reformulation of the obviousness test could have unintended consequences in areas like stem cells wherein one asks

does a teaching about mice render obvious a disclosure about humans?


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