[Ecommerce] "funny" patent story in MIP

[Manon Ress]

QUOTE:
A persistent theme in the justices' questions was the shortcomings of
the Federal Circuit's test, and in particular what the third part of
it means. "I don't understand, though I've read it about 15 or 20
times now, I just don't understand what is meant by the term
'motivation'," Justice Stephen Breyer said to Dabney.
END OF QUOTE

Justices ask the obvious question

James Nurton, London
http://www.managingip.com/default.asp?
page=3D9&PubID=3D198&SID=3D665374&ISS=3D22812&LS=3DEMS114063

A change to the test for when a patent is invalid on the grounds of
obviousness looks increasingly likely in the United States.

On Tuesday this week, Supreme Court justices heard oral arguments in
KSR v Teleflex, which some practitioners believe is the most
important patent case to come before the Court in 40 years.

Although the Supreme Court's opinion will not be published until at
least February next year, some clues as to the justices' views are
available from the oral argument, during which they quizzed KSR's
counsel James Dabney of Fried, Frank, Harris, Shriver & Jacobson and
Teleflex's counsel Tom Goldstein of Akin Gump, as well as the deputy
US solicitor general Thomas Hungar.

The case concerns whether the test the Federal Circuit applies when
assessing obviousness =96 which requires defendants to show that there
was a teaching, suggestion or motivation that would lead a person of
ordinary skill in the art to combine prior art teachings to come up
with the patented invention =96 is the only test that can be used.

Critics say the test places too high a burden on defendants and
allows too many weak patents to be upheld. Supporters of the test
argue that it addresses the problem that many inventions that combine
prior art are obvious with hindsight.

A persistent theme in the justices' questions was the shortcomings of
the Federal Circuit's test, and in particular what the third part of
it means. "I don't understand, though I've read it about 15 or 20
times now, I just don't understand what is meant by the term
'motivation'," Justice Stephen Breyer said to Dabney.

The justices also asked questions that suggested that the Federal
Circuit test could be supplemented or expanded by other tests for
obviousness. Justice Anthony Kennedy asked Dabney: "Would it be
inadvisable for us to say the motive test teaches us something
important; it has a valuable place; it's just not the exclusive test
for what's obvious?"

Speaking to Goldstein, Chief Justice John Roberts said that the
Federal Circuit's test, as articulated in the recent Kahn case (which
said that motivation could be implicit) "adds a layer of Federal
Circuit jargon that lawyers can then bandy back and forth" but that
if it is non-exclusive then "it's worse than meaningless because it
complicates the inquiry rather than focusing on the statute".

Justice Antonin Scalia agreed: "It is misleading to say that the
whole world is embraced within these three nouns, teaching,
suggestion or motivation, and then you define teaching, suggestion or
motivation to mean anything that renders it non-obvious. This is
gobbledygook. It really is, it's irrational."

But the judges also identified concerns that overturning the 20-year
old test could lead to "chaos". Justice David Hackett Souter asked:
"If the error is common enough and long enough, the error becomes the
law. And in effect is that what we are confronted with here?"

Speaking to MIP Week, Erik Puknys of Finnegan Henderson in Palo Alto
said he was "very surprised" at the Court's characterization of the
Federal Circuit test: "We have never felt we had any trouble
articulating the test. It is a tough test to meet but the obviousness
defence is still pretty good."

He added that if the Supreme Court decides that there may be other
ways to show obviousness apart from the Federal Circuit's test, but
does not specify exactly what those are, that would lead to further
backlogs in the PTO and "cases would become less settle-able":
"You're going to go from a disciplined test that people are used to
dealing with to who knows what?" That could destroy the uniformity of
interpretation that the Federal Circuit has built up over 20 years,
added Puknys.

In their questions, the justices also hinted at the wider policy
issues raised by the dispute. Breyer pointed out that in several
cases the Supreme Court has received briefs supporting and
criticizing the Federal Circuit, which led him to think "that there
is a huge argument going on in those who are interested in patents as
to whether there is too much protectionism and not enough attention
paid to competition or whether it's about right, or whether it goes
some other way".

He added: "I tend to think maybe it isn't well settled and maybe it
is a proper thing for us to be involved in."

There were also some lighter moments. When Goldstein argued that the
Federal Circuit test was supported by "every single major patent bar
association in the country" Roberts replied: "Well, which way does
that cut? That just indicates that this is profitable for the patent
bar."

The quotations from the oral argument in this report are taken from
the Supreme Court's official transcript.

For more on the background to this case see the previous articles in
MIP Week, previewing the oral hearing, describing the facts of the
case and putting the issues in context.




************************************************
Manon Anne Ress
manon.ress@cptech.org,
www.cptech.org

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