The National Pulse

Stating the Obvious

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You needn’t be a Thomas Edison to get a patent. Far from it. In recent years, it has sometimes seemed as if anyone can get a patent on almost anything.

A 5-year-old, for instance, received a patent on initiating forward motion on a playground swing by pulling on the ropes and swinging sideways. Another person obtained a patent on cutting or styling hair using scissors or combs in both hands. Then there are the patents for a crustless peanut butter and jelly sandwich, and for storing music on a server and letting users access it by clicking on a list of the music available. But don’t put all the blame on overworked examiners at the Patent and Trademark Office. Even when an invention seems obvious, the PTO may be prevented from rejecting the application because of the standards laid out by the U.S. Court of Appeals for the Federal Circuit.

In 1999, for instance, the PTO rejected a patent application on the basis that the so-called invention merely combined two existing items, and it was generally known that combining these items was obvious. The Federal Circuit reversed, holding that any such general knowledge “must be articulated and placed on the record.” In re Lee, 277 F.3d 1338 (2002). This ruling, then-Deputy Patent Office Commissioner Esther Kepplinger told the Los Angeles Times, meant “we can’t reject something just because it’s stupid.”

Kepplinger is far from the only one to complain about the Federal Circuit’s standard for obviousness. The Federal Trade Commission issued a 2003 report that stated there were too many poor-quality patents, largely because of the Federal Circuit’s test for obviousness. The National Academy of Sciences issued a 2004 report with these same conclusions. And for years, many lawyers, business executives and academics have been clamoring for a change in the Federal Circuit’s standard.

Standard Analysis

That change may soon arrive, thanks to KSR international Co. v. Teleflex Inc., No. 04-1350. The case, which will be argued before the U.S. Supreme Court this term, marks the first time in 30 years that the court will examine the standard for determining which inventions are obvious.

The KSR case could produce enormous ramifications for the patent system and all who use it. If the court significantly alters the Federal Circuit’s standard, it could become harder—or impossible—to patent many inventions. Defendants in infringement suits could find it far easier to challenge the validity of plaintiffs’ patents.

“It would be a very hostile environment for patent applicants and for those who have obtained patents,” says Cheri Taylor, a patent attorney in Reston, Va., who co-chairs the Patent System Policy Planning Committee of the ABA’s Section of Intellectual Property Law.

The invention at issue in I may seem obvious. Take adjustable pedals for automobiles, which have been used in cars since the 1970s. Then add a technology found in cars since the mid-1990s: pedals that use electronic sensors, instead of cables, to control the engine. The result is an adjustable pedal that uses electronic sensors. Teleflex applied for a patent on this combination in August 2000. It received the patent nine months later. After rival KSR landed a big contract to supply this type of pedal assembly for GM’s light trucks, Teleflex sued KSR for infringement in November 2002. The trial court threw out the suit on a summary judgment motion, ruling in December 2003 that Teleflex’s combination was obvious and thus unpatentable. Under the Patent Act, an invention cannot be patented if, “at the time the invention was made,” it “would have been obvious … to a person having ordinary skill in the art.”

The Federal Circuit overturned the trial court’s ruling in January 2005, reinstating Teleflex’s infringement suit. The three-judge panel found there was no evidence that at the time Teleflex submitted its patent application, automotive engineers had any explicit teaching, motivation or suggestion to combine the two different types of pedals.

The Problem with Hindsight

The ABA’s IP section has adopted a resolution in support of the Federal Circuit’s teaching-suggestion-motivation test. “The test is a means of guarding against the use of hindsight,” says Taylor. As of late August, the ABA was considering filing an amicus brief. At least 17 amicus briefs had been filed by Aug. 22.

The problem with hindsight is that it is 20-20, say supporters of the Federal Circuit’s approach. It is all too easy to look back and say that a combination is obvious—because we already know about it. At the time, however, the combination may have been undreamt of by anyone except the inventor. By requiring some clear, explicit reason for people to combine the invention’s elements, the Federal Circuit’s test prevents unfettered hindsight from invalidating new and innovative combinations.

Critics of the Federal Circuit rule say it imposes an undue burden on patent examiners and others who are trying to show that an invention is obvious. After all, scientists and engineers publish articles about what is innovative, not about what is common knowledge. So it can be extremely difficult, if not impossible, for a defendant to find any explicit teaching, suggestion or motivation for an obvious combination.

“The way the standard has been applied in recent years, it has been very hard to prove a patent invalid for obviousness,” says Dale Heist, a patent litigator in Philadelphia. Critics also claim that the Federal Circuit’s test contradicts numerous Supreme Court precedents, which have held that a combination of existing items can be patented only if the combination creates an unexpected synergy. “If the Supreme Court’s cases are read literally, when you assemble known parts and each part does what it is already known to do, your invention is obvious,” says George Best, a patent litigator in Washington, D.C. “That creates a much higher bar to patentability than exists under the current Federal Circuit standard.”

Many observers expect the court will use this case to alter the current Federal Circuit test for obviousness, thus making it harder to obtain patents on obvious inventions. “The reason that the court took the case is to change or abolish the teaching-suggestion-motivation test,” says Katherine Strandburg, who teaches patent law at DePaul University in Chicago.

When asked repeatedly to comment on this case, Teleflex and its outside counsel failed to respond. KSR’s counsel had no such reticence.

“I think [the justices] will vote 9-0 to reinstate the district court’s judgment,” says James Dabney, a New York City litigator who represents KSR. “That’s what the solicitor general has urged them to do, as well as the patent office. So I don’t think I’m going too far out on a limb here.”


A Taste of Things to Come

For 40 years, the U.S. Supreme Court paid little attention to patent law. But that’s all over, if the court’s last term is any indication.

In its 2005-06 term, the court heard oral arguments in four patent cases. It was the largest number in four decades, and it showed the court’s growing interest in—and concern about—patent law.

The most important of last term’s patent cases, eBay Inc. v. MercExchange, 126 S. Ct. 1837 (2006), rejected the Federal Circuit’s rule that once infringement is shown, an injunction should issue against the infringer absent some “exceptional circumstances.” The court held that patent cases should be treated the same as other cases, with injunctions issuing only if the plaintiff satisfies the traditional four-part test for an injunction. The ruling may make it significantly harder for patent owners to get injunctions, which would diminish their ability to push infringers into settlements.

In Illinois Tool Works Inc. v. Independent Ink Inc., 126 S. Ct. 1281 (2006), the Supreme Court overturned its own century-old precedent and held that owning a patent does not create a presumption of market power under federal antitrust law. The decision expands the ability of patentees to profit from their patents by making it easier for patentees to tie the sale of their patented products to the sale of other, nonpatented goods.

What might have been the most important patent case of the term turned out to be a dud. Laboratory Corp. v. Metabolite Laboratories Inc., 126 S. Ct. 2921 (2006), raised important questions about what types of inventions are patentable. There was the possibility that the court would use the case to strike down the patents on thousands of inventions, including business methods. But the court dodged the issue of patentability, ruling instead that certiorari was improvidently granted.

That generated an unusual dissent by Justice Stephen G. Breyer, who was joined by Justices John Paul Stevens and David H. Souter. The dissenters worry that patent protection is being given to too many inventions. “Too much patent protection can impede rather than ‘promote the progress of science and useful arts,’ the constitutional objective of patent … protection,” Breyer wrote.

“It is clear that the dissenting justices were extremely concerned about the quality of patents that have been issued,” says George Best, a patent litigator in Washington, D.C. He adds that “a number of justices are suspicious that the patent system is not working well and may want to change the system to make it harder to get patents.”

Many expect that the court will be taking a larger and more active role in policing patents. “The Supreme Court has come to take a more critical view of the Federal Circuit’s decisions and its decision-making processes,” says Cheri Taylor, a patent attorney in Reston, Va.

Steve Seidenberg is a lawyer and freelance journalist in Fanwood, N.J., who contributes regularly to the ABA Journal.

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