Prominent IP prof Mark Lemley favored the grant of cert in KSR, but also thinks that the decision of the Federal Circuit should be upheld. He explains to Greg Aharonian's Internet Patent News e-list::

I saw that someone posted a comment about my signing the KSR brief. Feel free to post the following, if you like.

I did sign an amicus brief in support of respondents, which surprised a lot of people given that I also signed a brief supporting cert. The two aren't exactly on opposite sides -- urging the Court to take the case isn't the same as urging it to reverse -- but it is the case that most people who supported cert also supported reversal.

I do think courts let obvious patents slip through. And I think the Federal Circuit has until recently been inconsistent in how it applies the obviousness test. That's why I supported cert. But I have also been persuaded by Greg Mandel that there is a serious hindsight bias problem, and by Chris Cotropia that while the Federal Circuit has not been consistent in its articulation of the test, it has actually done a decent job of distinguishing cases in which people come up with a plausible story for obviousness from those in which they don't. And the Federal Circuit has -- belatedly -- recognized that the "teaching-suggestion-motivation" test is a lot broader and more flexible than some of its earlier opinions suggested. Couple that with my fear that the Supreme Court will go overboard and return us to the 1970s world of synergism, and I ended up coming to the conclusion that it was better to advocate a broad and flexible teaching-suggestion-motivation standard than to give it up.

Greg note: Mark is referring to Albany Law School professor Gregory Mandel's paper: "Patently Non-Obvious II: experimental study on the hindsight issue before the Supreme Court in KSR v. Teleflex", in which he writes:

The study results indicate that the Federal Circuit's suggestion, teaching, or motivation requirement, the precedent challenged before the Supreme Court in KSR v. Teleflex, does not produce erroneous non-obvious outcomes. This result contradicts the claims of the petitioners in KSR and other critics of the suggestion requirement. On the other hand, the results do not demonstrate that the suggestion test ameliorates the hindsight bias in the manner usually claimed by its supporters. An additional study indicates that the Supreme Court's Graham framework does not resolve the hindsight problem either. Given the substanital and now confirmed prejudicial effect of the hindsight bias, the Article concludes that the suggestions test should be reatined for several reasons: it does not apper to cause the harms hypothesized by its critics, it potentially reduces the hindsight bias for complex technology inventions, and the problem the test confronts (errorenous decisions that an invention is obvious in hindsight) is known and significant while the problem the test is alleged to create (over-compensation for the hindsight bias) is unconfirmed and conjectural.

All the KSR briefs are on Patently-O (plus an analysis of the the main points and 170 comments from interested readers.)

posted by James DeLong @ 10:02 AM | Patents

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