Sunday, June 17, 2007

Judge Michel writes Senators Leahy, Specter on June 13

Further to a letter by Judge Michel to a member of Congr. Berman's staff, Judge Michel has written a letter to Senators Leahy and Specter, dated June 13, 2007, which touches on interlocutory appeal and damages apportionment provisions of S.1145.

Judge Michel states that the proposed provision in S.1145 amounts to a third avenue of appeal. Judge Michel refers to a study by Jay Kesan that the proposed provision could double the number of appeals. (no citation is given to the study).

Judge Michel turns to damage apportionment issues, and refers to the paper by William Rooklidge, available at

At page 2 of his letter, Judge Michel notes that the average patent trial takes 11 months from filing to opinion. He suggests that with the third appeal pathway this time might possibly double, and observes "such extended delays would be intolerable from the standpoint of the corporate litigants." [emphasis added]


Gene Quinn at PLI's patentcenter wrote about the letter of five Republican Senators to Leahy noting that now that a specific patent reform proposal is up for consideration further hearings are appropriate to obtain information and insight relative to the specific reform changes proposed. The input of Judge Michel is directed to the SPECIFIC reform changes proposed.

In a different post, Quinn writes about KSR v. Teleflex:

In a pre-KSR world it would seem that this baseball glove patent [US 6,571,394] could not have issued, or at least one would hope that if KSR gets applied on any level it could at least be applied in a way that would prevent the issuance of obscure, wacky and weird patents. For the time being we can certainly observe that the KSR standard, which provides little or no object guidance regarding when references should be combined in the absence of a teaching, suggestion or motivation, should address “inventions” like this one and perhaps make it harder for invention scams to exist.

On one level the KSR is a wonderful decision because it make this and other quasi-inventions unpatentable, thereby returning credibility to the term “patented.” On many other levels, however, KSR remains troubling for me. The lack of any real guidance suggests that clients are in for some challenging and uncertain times. While uncertainty may be a good thing for those who bill by the hour, I wonder about the damage that could be done because it seems that now an examiner can reject claims for virtually any reason under KSR. It seems to me that the Supreme Court took out and discharged an elephant gun, but was aiming not at an elephant, but a much smaller mammal. Not necessarily a mouse, but certainly not an elephant. This suggests to me that there will be collateral damage, but just how much damage remains to be seen.

IPBiz notes that KSR allowed the phrase "common sense" to be substituted for reasoning which was written down and reviewable. In that sense, it was a step backward for objective analysis. And people are still debating whether the TSM test has been eliminated. The KSR decision was not a model of clarity. But "uncertainty may be a good thing for those who bill by the hour," so don't expect much complaining from those who benefit.


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