Sunday, January 21, 2007

Patent Law Confuses Application with Invention?

There is an article by Timothy B. Lee entitled Patent Law Confuses Application with Invention which appears at

The article discusses a number of cases but targets KSR:

Which brings us to November’s oral argument before the Supreme Court. Teleflex holds a patent that covers connecting a car’s gas pedal to its engine throttle electronically, rather than mechanically. The defendant, KSR International, argued that simply connecting two well-understood components was too obvious to merit a patent. The Federal Circuit ruled for Teleflex, holding that without specific documentation describing the connection of a gas pedal to an electric throttle, it could not declare the invention obvious.

That argument was not so well received by the Supreme Court, especially its conservative members. Justice Antonin Scalia called the Federal Circuit’s rule “irrational” and “gobbledygook.” When Teleflex’s attorney noted that his position is supported by the major patent bar associations, Chief Justice John Roberts retorted, “Which way does that cut? That just indicates that this is profitable for the patent bar.”

Of the "specific documentation" point, Lee wrote: [The CAFC] held that when a patent covers the combination of two elements, it can be declared obvious only if someone can produce another patent, an academic paper, or other formal documentation that pre-dated the patent application and had a specific “teaching, suggestion, or motivation” to combine the elements in the manner described.

Lee is wrong in stating that specific documentation must be found. In the CAFC case of In re Kotzab, decided in the year 2000 long before KSR v. Teleflex, the CAFC wrote:

the teaching, motivation, or suggestion may be implicit from the prior art as a whole. rather than expressly stated in the references... In re Kotzab, 217 F.3d 1365, 1370 (CAFC 2000)

On recalls that the Kotzab case was explicitly cited in the CAFC decision in the KSR case. As stated on IPBiz:

The 2005 decision of the Federal Circuit is not citable as precedent (nonprecedential). In ED Michigan, defendant KSR prevailed on a summary judgment motion for invalidity. Teleflex appealed for several reasons. One asserted an error of law based on an incorrect teaching-suggestion-motivation test. For prior art, the district court had relied on the Asano patent (5,010,782) and asserted that electronic controls (not taught by Asano) were well known in the art. In finding the district court's analysis wrong, the CAFC cited Kotzab, 217 F.3d at 1371, observing the district court was required to make specific findings as to whether there was a suggestion or motivation to combine the teachings of Asano with an electronic control in the particular manner claimed by claim 4 of the ’565 patent.

There is further discussion at the techliberation blog.

LBE noted:

Without reaching into the nuances of patent law, the CAFC decision in KSR (which significantly is NONPRECEDENTIAL) relied on, and EXPLICITLY cited, In re Kotzab, so any "confusion" regarding the LACK of a requirement for a specific document to show motivation would have to be an intentional confusion. Another point worth noting is that the Federal Circuit didn't say the invention wasn't obvious; they merely said that there was no showing of motivation (i.e., there was a lack of evidence; not that there might not be evidence). For the requirement of motivation, the Federal Circuit cited In re Kotzab, which is the precedential case at issue (although certainly not the first case requiring motivation).


As a followup, for a different "conservative" view on the case.

#1. A district court is required by law to follow the precedent of the relevant appellate court, here the Court of Appeals for the Federal Circuit.

#2. Here, the district court didn't bother to write down any reason that one of ordinary skill would combine the two parts of the combination invention as claimed by the patentee.

#3. In not writing down any reason, the district court violated controlling precedent, as expressed for example in In re Kotzab.

#4. As a separate matter, the Kotzab case states that motivation may be implicit in the prior art as a whole, rather than having to be found in one particular document. Thus, the burden of finding "something" to write down was not high.

#5. The Federal Circuit sent the case back to the district court, to write something down. The Federal Circuit did not say that the invention wasn't obvious. They said the district court didn't follow the law.

#6. Talking about "how obvious" the invention at issue may be is interesting, but irrelevant to what happened here, as there was no ruling that the invention wasn't obvious. The district court flaunted controlling precedent, which it is not at liberty to do. The Supreme Court has the power to change the precedent of the Federal Circuit, but the district court does not.

Although the question of whether or not the invention in the KSR case is obvious was NOT at issue before the Federal Circuit, one notes that the Federal Circuit has to fashion law that applies to a variety of cases. Thinking about a different case is instructive. Right now, three of the Thomson (WARF) patents on human stem cells are being challenged. The challengers say that Thomson merely followed a "recipe" that had been created for mouse stem cells. Years and years passed between the time of the mouse recipe and the isolation of a human stem cells. Obvious?

Of "obviousness" in the scientific realm, the journal Science published two papers in the area of SCNT to create human embryonic stem cells. The reviewers and editors passed judgment that the submitted manuscripts were entirely plausible, based on scientific principles. They weren't. Significantly, one year has passed since the fraud was uncovered, and not one lab in the whole world has been able to duplicate the results of the first paper, much less the second paper. Was the considered judgment of the scientific community "obviously" wrong?

Finally, it is ironic to note that the opinions on patents of the conservative community of 2007 bear a striking resemblance to the opinions of two liberal icons, Black and Douglas, as they were expressed for example in the Graver Tank case back in 1950.

***UPDATE. 24 Jan.**

To date, no response or comment has appeared in response to my postings on techliberation. It is interesting to note that when the facts of the KSR case are laid out, the people who talk about the absurd definition of obviousness of the Federal Circuit have nothing to say. Reminds IPBiz a bit of Game 7 of Mets v. Cardinals in 2006. [from the Boston Globe: Beltran took a called first strike, fouled the next pitch at the plate, then never moved as Wainwright's slow curve cut through the strike zone. ``You have good moments and bad moments in your career," Beltran said afterward. ``This was a bad moment, one I'll have to live with the rest of my life."]
The obviousness critics never move when the KSR facts appear.


Blogger Lawrence B. Ebert said...

I tried to post the following on technology liberation, but it bounced back (not posted):

Of the text --The whole point of the article was that the Supreme Court should reject the Federal Circuit's absurdly narrow definition of the term.--, the Federal Circuit's approach to obviousness is roughly in two parts:

#1. Gather references that illustrate each part of the claim (i.e., show that there is prior art teaching each claim element; meaning that there is structural similarity between the alleged invention and old work)

#2. Show that there is a reason to combine the many references to reach the invention of the claim. That is, just because A, B, and C all existed before the invention doesn't mean that the invention (A + B + C) existed.

To give a simple example, the invention of the Wright Brothers pertained to three-dimensional control of flight (not to powered flight, as some believe). Control of two dimensions was well-known before the Wrights, and, ailerons, an element that could control the third dimension (analogously to the wing warping of the Wrights) was also known before the Wrights. A, B, and C were all known. Did that make (A + B + C) obvious? Is the Federal Circuit's definition "absurdly narrow"? If so, propose a new one, rather than hiding with the confusion of the justices.

As a minor aside, the Wright's patent application, written by the Wrights, was filed months before the date of powered flight in December 1903. Relevant to the remark above about patent lawyers, the patent lawyer who later came on board (and who would be used by the Wrights at all later times and who recently was honored with a statue) altered the application in ways which delayed issuance. Not being a patent lawyer is no barrier to understanding patent law. And spending too much time with patent lawyers can be hazardous, as Wilbur learned.

Separately, on the "tools belong to the man who can use them" concept:

Lawrence B. Ebert
January 23, 2007

11:36 AM  

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