Today, in response to the Supreme Court’s invitation, the Solicitor General filed a brief expressing the views of the U.S. on the petition in KSR Int’l Co. v. Teleflex Inc., S. Ct. No. 04-1350. (Copy of the brief courtesy of SCOTUSblog.) The brief is signed not only by the SG, but also by both the General Counsel and the Solicitor of the PTO. To put it mildly, it supports the petitioner’s request for review. This contrasts with the large batch of CVSG briefs filed last week: According to SCOTUSblog, “[t]he six invitation briefs previously filed by the Solicitor General this month had all recommended that cert. be denied.”

To put it not-so-mildly, the SG’s brief in support of KSR is HIGHLY critical of the Federal Circuit’s suggestion/motivation requirement in proving an invention would have been obvious. (This continues the critical note the SG struck last week in its merits brief in the MedImmune declaratory judgment jurisdiction / licensee estoppel case, which brief Patently-O discusses in detail.) Having signed on to an amicus brief with 23 other law professors that made many of the same points in favor of KSR’s petition, I am delighted.

The question presented in KSR’s petition, which it filed at the Supreme Court on April 6, 2005, is as follows:

Whether the Federal Circuit has erred in holding that a claimed invention cannot be held “obvious,” and thus unpatentable under 35 U.S.C. sec. 103(a), in the absence of some proven “‘teaching, suggestion, or motivation’ that would have led a person of ordinary skill in the art to combine the relevant prior art teachings in the manner claimed.”

For more background and links to all the petition-stage briefs in KSR, see the indefatigable Patently-O.

The SG’s support for KSR’s petition makes it dramatically more likely that the Court will grant review in the case. The Supreme Court has not engaged in a thoroughgoing assessment of the way to test for obviousness since its 1966 decision in Graham v. John Deere, 383 U.S. 1. If the Supreme Court grants review, the SG will no doubt file an amicus brief on the merits. What will that brief say? We know at least some of what it will say, because the CVSG brief forecasts it.

Below the fold, I quote at length from the SG’s brief and offer comments.

The SG’s brief does not merely argue that the question in the case is an important one, and that this particular case presents a clean, clear vehicle for addressing the question (although it does make these two points). It goes further, arguing that the Federal Circuit’s suggestion/motivation test both conflicts with Graham (and thus with sec 103) and is bad for the patent system (i.e., bad patent policy).

The brief summarizes both points crisply on p. 9:

The Federal Circuit has transformed one means of establishing obviousness under [the Graham] framework–proof that the prior art provided a teaching, suggestion, or motivation for combining separate prior art references–into an inflexible requirement for determining obviousness. As this case demonstrates, the Federal Circuit’s teaching-suggestion-motivation test extends patent protection to non-innovative combinations of familiar elements. The issue is important, because many patent applications rest on the combination of prior art reference, and because extension of patent rights to obvious combinations of familiar elements retards, rather than advances new discoveries.

The rest of the brief elaborates on these two themes–improper rigidity, and the frustration of patent law’s core commitment to keeping obvious innovations free for public use. Now, I’ll unpack both points a bit with more key passages from the brief.

Graham’s Flexibility – Echoes of eBay

The first theme–the Federal Circuit is approaching the question at issue too rigidly–echoes the Supreme Court’s decision just the other day in eBay v. MercExchange, which I discussed here. (In eBay, the Supreme Court concluded that both the trial court and the Federal Circuit had erred in the case by using rigid, near per se rules (rather than sec 283’s flexible, case-specific four-factor test) to assess the propriety of injunctive relief.) The SG does not cite eBay in this brief. He hardly needs to; the echo is loud and clear.

According to the SG, section 103(a)

does not specify how courts should weigh the relevant factors in making the legal determination, in any particular case, of whether an invention as a whole would have been “obvious.” While the Court identified in its Graham decision the framework for analysis and the relevant considerations, it observed that the application of Section 103(a) would continue to depend on the “given factual context,” … and that further refinements “should be amenable to a case-by-case development.”

Brief at 11 (quoting Graham). Flexibility is the watchword: “The Court has accordingly declined to embrace rigid categorical rules that would inflexibly limit the ability of the courts or the [PTO] … to make individualized determinations of obviousness.” Brief at 12. The Federal Circuit, the SG states, is out of step with the mandated flexible approach: “In none of its decisions has the Court adopted the inflexible rule, which the Federal Circuit applied in this case and has consistently articulated in other decisions,” that a successful obviousness attack requires proof of a suggestion or motivation to combine or modify the prior art references. Brief at 12.

Interestingly, the brief takes on two of the rejoinders one might expect. First, one might expect a supporter of the Federal Circuit’s suggestion test to argue that it is not as inflexible as the SG portrays it because suggestions can be shown implicitly, as well as explicitly. The SG is unpersuaded: the Federal Circuit’s allowance for implicity suggestions “has not, in practice, substantially reduced the burden that its test imposes.” Brief at 15. The facts of the KSR case itself help illustrate the point. Brief at 15. Second, one might expect a suggestion test advocate to urge that it is a necessary guardian against hindsight bias. The SG acknowledges that the Federal Circuit relies on just this justification, Brief at 15, and then critiques it:

The Federal Circuit’s test effectively constricts this Court’s guidance in Graham respecting the nonobviousness inquiry, it fails to account adequately for the problem-solving abilities of persons of ordinary skill in the art, and it underestimates the capabilities of courts and patent examiners to “resist the temptation” of hindsight and to consider fairly the question of obviousness. Moreover, if there is a need for the Federal Circuit’s strict measures to guard against the possibility of hindsight, this Court should make that decision itself.

Brief at 16 (quoting Graham).

One response to all this might be, okay, the Federal Circuit’s suggestion/motivation test goes beyond Graham. And perhaps it’s a less flexible approach. But one person’s “flexible” is another’s “unpredictable.” Is it really all that harmful to guard against hindsight in this way? That takes us to the second theme …

Bad Substance, Bad Process

The SG decries the suggestion test on both substantive and procedural grounds.

First, substance: “the Federal Circuit’s rigorous and inflexible application of its test … unnecessarily sustains patents that would otherwise be subject to invalidation as obvious.” Brief at 12. Put another way, the suggestion test makes the nonobviousness hurdle too easy to clear, by making it too hard to show a suggestion and thereby prove obviousness. The SG does not, of course, deny that proof of a suggestion to make the claimed combination is powerful evidence of obviousness. The problem comes from making proof of a suggestion a necessary ingredient in a succesful attack. Brief at 13. As the SG describes it,

the test requires the party challenging the patent to come forward with affirmative evidence in the prior art of a teaching, suggestion, or motivation to combine the features [in the new claim]. That showing may be difficult or impossible even though the combination, on its face, would have been obvious. For example, such affirmative evidence may be lacking if the claim arose in a newly emerging technical field or if the combination was so obvious to persons skilled in the art that no one would have need or incentive to record the trivial extension of the art.

Brief at 14. This substantive critique essentially urges that patent system decisionmakers–judges and patent examiners–should be able to trust their informed judgment that an invention would have been obvious “on its face,” that it is a “trivial extension of the art.”

Second, procedure: Denying that a facially obvious invention would, in fact, have been obvious, can distort the decisional process and degrade the patent system. As KSR itself illustrates, if the suggestion test is merely one way to show obviousness, rather than the exclusive test, the trial court’s decision to grant summary judgment (and thereby avoid the burden of a trial) should stand. “The claimed invention here is at least as obvious as the invention in Graham, and Anderson’s-Black Rock. The Federal Circuit’s test nevertheless prevents summary resolution of the issue … [and] shunts cases to trial that should be resolved at summary judgment.” Brief at 17.

More important, the SG argues that the suggestion test unduly ties the hands of the PTO. Graham itself states that “the primary responsibility for sifting out unpatentable material lies in the Patent Office.” 383 U.S. at 18. When it carries out its expert role, the PTO’s decision about nonobviousness is, the SG argues, entitled to a level of deference that the suggestion test undermines:

When PTO applies its technical expertise and reasonably articulates why a patent claim is obvious under Section 103(a), that determination is entitled to deference reflecting “the primacy of the PTO in ensuring that the claims allowed cover only subject matter that is properly patentable.” PTO’s obviousness inquiry should not require an unnecessary search for evidence showing a particular suggestion, teaching, or motivation to make insubstantially innovative combinations of elements that are known in the prior art. PTO should instead be allowed to bring to bear its full expertise–including its reckoning of the basic knowledge and common sense possessed by persons in particular fields of endeavor–when making the predictive judgment whether an invention would have been obvious to a person of ordinary skill in the art.

Brief at 17-18 (quoting Warner-Jenkinson). (I don’t know why the SG refers to the PTO as if “PTO” were someone’s proper name, rather than an abbreviation.) In short, the SG contemplates an approach to analyzing obviousness that would lead to more numerous, and more readily sustained, summary judgment determinations of invalidity for obviousness and PTO rejections for obviousness.

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I’m entirely in agreement with the SG’s brief, regarding both the need for Supreme Court review and the dysfunction of the Federal Circuit’s suggestion test.

My prediction? The Supreme Court will grant review in KSR. Time to start working on an amicus brief on the merits …