While the attention of the small but intense band of those interested in patent reform is fixed on developments in Congress (Promote the Progress and Patently-O have useful articles), a sleeper Petition for Certiorari is awaiting Supreme Court attention.

As noted in the PFF press release this morning, both PFF and a group of 24 law profs filed amicus briefs urging the Court to take the case.

(And it is not too late for others to get involved: the deadline for response to the cert petition has been extended to June 22, and, per the Clerk's office, this automatically extends the time for filing amicus briefs in support or opposition. Contact numbers/emails are at the end of this entry.)

At issue is the bedrock patent law and policy requirement of "non-obviousness" -- a patent will issue only if the invention would not have been obvious to "a person having ordinary skill in the art." (called PHOSITA, in the literature).

KSR v. Teleflex involves not some computer gizmo or software program, but an accelerator pedal. A federal district court thought the invention -- a combination of two well-known elements -- obvious, and knocked down the patent. The Federal Circuit reversed, regarding the matter as so clear that it did not even bother to publish its opinion. (See a video of the technology.)

The KSR cert petition argues that the Federal Circuit's test of non-obviousness is too lax, and is not in accord with rules established by the Supreme Court over a quarter of a century ago, which is the last time it looked at this issue. (The lower court opinions are in the petition.)

The case ties in with the reform legislation, because most of the legislative proposals are based on a perceived need to improve patent quality, to ensure that non-inventive inventions do not make it through the system. But in any debate over patent quality, the concept of "non-obviousness" is crucial, because that is the basic mesh in the sieve through with patent applications must pass. If that standard is too lax, then post-grant review and second looks become pointless; all USPTO can do is say "yep, that's a patent all right!"

Furthermore, much of the concern about injunctions is related to the non-obviousness standard -- it is not that injunctions are available that is the major problem, but that injunctions are available for patents that should not have been granted in the first place.

The National Research Council, the Federal Trade Commission, and numerous economics and legal scholars have expressed concern about the Federal Circuit's view of non-obviousness (for the citations, see our brief). We agree -- this is a fulcrum of the quality issue.

Cert petitions normally get little attention, because the chance of a non-government petition being granted is so low that it is not efficient for people to pay it notice. But KSR has a good bit going for it, given the clarity of the issue and the expressed concern of such bodies as the NRC and the FTC. As PFF says in its brief: "Surely, the attention and concern given this issue by so many prestigious and disinterested experts is a powerful indication that it should also command the attention of this Court."

For more on the issue, read the briefs, of course. Also, Patently-O has a good précis. And this blog had a discussion of the non-obviousness issue last year, including some comments by John Duffy, a prominent law professor and patent expert who helped write the cert petition for KSR. As noted in that exchange, we think the issue was well-summarized by Mr. Justice Bradley, in 1882:

The design of the patent laws is to reward those who make some substantial discovery or invention, which adds to our knowledge and makes a step in advance in the useful arts. Such inventors are worthy of all favor. It was never the object of those laws to grant a monopoly for every trifling device, every shadow of a shade of an idea, which would naturally and spontaneously occur to any skilled mechanic or operator in the ordinary progress of manufactures. Such an indiscriminate creation of exclusive privileges tends rather to obstruct than to stimulate invention. It creates a class of speculative schemers who make it their business to watch the advancing wave of improvement, and gather its foam in the form of patented monopolies, which enable them to lay a heavy tax upon the industry of the country, without contributing anything to the real advancement of the arts. It embarrasses the honest pursuit of business with fears and apprehensions of concealed liens and unknown liabilities to lawsuits and vexatious accountings for profits made in good faith.

KSR
James Dabney
Fried Frank Harris Shriver & Jacobson
(212) 859-8000
dabnejam@ffhsj.com

John Duffy
(202) 994-0014
jfduffy@law.gwu.edu

Teleflex
Rodger D. Young
Young & Strasser
(248) 353-8620
Young@youngpc.com

Law Profs
Robert Bauneis
(202) 994-6138
rbrauneis@law.gwu.edu

Katherine Strandburg
(312) 362-8536
kstrandb@depaul.edu

PFF
James DeLong
(202) 289-8928
jdelong@pff.org

Solveig Singleton
(202) 289-8928
ssingleton@pff.org

posted by James DeLong @ 11:51 AM | Patents

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