Friday, May 04, 2007

Impact of KSR on challenge to Thomson WARF patents

On April 30, IPBiz had a post -- KSR v. Teleflex: it's not bedtime for Bongso-- on the possible implications of KSR v. Teleflex on the re-exam of the Thomson stem cell patents.

On May 2, Wisconsin Technology Network had a story --Supreme Court ruling seen as blow to WARF stem cell patents--, which included text:

Frenchick said the impact of the Supreme Court's ruling may not be as profound on life-science patents.

He said the patent world has two classes of tests: a predictability test that pertains more to patents for mechanical inventions like the patent issued for adjustable gas pedals at issue in KSR vs. Teleflex, and a non-predictability test that pertains more to patents for life-science discoveries.

With life-science inventions, “we can extrapolate and guess, but until we conduct an experiment, we don't know if it's going to work,” Frenchick said. “That's true in drug discovery and stem cell experiments.”

This text refers to the consideration of courts for predictable vs. unpredictable arts. HOWEVER, this text does NOT consider that the case being blown away by the Supreme Court on the "obvious to try" business was In re Deuel, cited with FAVOR by the CAFC in its non-precedential decision in KSR, but basically killed off by the Supreme Court. For those who may not remember, Deuel was a biotech case, and the previous disapproval of "obvious to try" is now gone (subject to some limitations).

Nevertheless, there's a bit of a shell game going on here. Following the Supreme Court decision in KSR, the USPTO issued examination instructions which included:

[I]n formulating a rejection under 35 U.S.C. 103(a) based upon a combination of prior art elements, it remains necessary to identify the reason why a person of ordinary skill in the art would have combined the prior art elements in the manner claimed.

For all the verbiage, the Supreme Court NEVER said the "in the manner claimed" part of the TSM test was wrong. Of course, whether or not failure to meet TSM is a true show stopper is not clear, either.

In the re-exam, the USPTO will be following the post-KSR examination instructions. The biggest "change" WARF faces is the possible application of "obvious to try," with the Supreme Court seemingly rejecting In re Deuel (the biotech case cited by the CAFC in the nonprecedential KSR opinion.).


Post a Comment

<< Home