Nonobviousness: Greatest Hits, #2
As I noted the other day, the Solicitor General has filed a brief urging the Supreme Court to grant review in KSR v. Teleflex, a case about the appropriate test for nonobviousness. In that brief, the SG quotes several times from the Supreme Court’s unanimous decision in Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141 (1989). In Bonito Boats, the Supreme Court struck down a Florida state statute that protected vessel hull designs from copying, on the ground that the Florida law conflicted with, and was thus preempted by, the Patent Act. What does that have to do with the nonobviousness standard? Well, before explaining how the state vessel hull statute conflicted with the Patent Act, the Court explained the basic policy commitments embodies in the Patent Act.
First, regarding the right to copy as part of the balance of i.p. law (at p. 146):
From their inception, the federal patent laws have embodies a careful balance between the need to promote innovation and the recognition that imitation and refinement through imitation are both necessary to invention itself and the very lifeblood of a competitive economy.
Second, regarding the role of the nonobviousness requirement in fostering a robust public domain (at p. 150):
The nonobviousness requirement extends the field of unpatentable material beyond that which is known to the public under section 102, to include that which could readily be deduced from publicly available material by a person of ordinary skill in the pertinent field of endeavor. Taken together, the novelty and nonobviousness requirements express a congressional determination that the purposes behind the Patent Clause are best served by free competition and exploitation of either that which is already available to the public or that which may be readily discerned from publicly available material.
Finally, regarding the relationship of patenting to free competition (at p. 151):
The novelty and nonobviousness requirements of patentability embody a congressional understanding, implicit in the Patent Clause itself, that free exploitation of ideas will be the rule, to which the protection of a federal patent is the exception.
Sounds a lot like the policy sentiments often expressed in describing the benefits achieved via “design arounds.”
Hilton Davis Chemical Co. v. Warner-Jenkinson Co. Inc., 62 F.3d 1512, 1520, 35 USPQ2d 1641 (Fed. Cir. 1995) (en banc) (“The ability of the public successfully to design around—to use the patent disclosure to design a product or process that does not infringe, but like the claimed invention, is an improvement over the prior art—is one of the important public benefits that justify awarding the patent owner exclusive rights to his invention. Designing around ‘is the stuff of which competition is made and is supposed to benefit the consumer.’� – citations omitted – instructing that evidence of design around could support an inference that accused product is more than insubstantially different from claimed invention), aff’d in part, rev’d in part on other grounds, 520 U.S. 17, 36, 117 S. Ct. 1040, 1052, 137 L. Ed. 2d 146, 41 USPQ2d 1865 (1997) (questioning feasibility of test)
Slimfold Mfg. Co. v. Kinkead Industries, Inc., 932 F.2d 1453, 1457, 18 USPQ2d 1842 (Fed. Cir. 1991) (“Designing around patents is in fact, one of the ways in which the patent system works to the advantage of the public in promoting progress in the useful arts, its constitutional purpose.� – finding that modification to patented design operated in a substantially different way from patented device and therefore avoided infringement)
State Industries, Inc. v. A. O. Smith Corp., 751 F.2d 1226, 1235-36, 224 USPQ 418, 424 (Fed. Cir. 1985) (explaining that designing around existing patents promotes competition to the benefit of consumers and stating “we see the familiar picture of competitors competing, one trying to match a new product of the other with a new product of its own, not copied but doing the same job, and the other manipulating its secret pending patent application to cover the functionally competitive structure it did not think of but deems to embody its proprietary ‘inventive concept.’ This is a classic commercial gamesmanship under the patent system but it is not the kind of behavior courts have categorized in the past as willful infringement, which requires knowledge of the patent. Conduct such as Smith’s, involving keeping track of a competitor’s products and designing new and possibly better or cheaper functional equivalents is the stuff of which competition is made and is supposed to benefit the consumer. One of the benefits of a patent system is its so-called ‘negative incentive’ to ‘design around’ a competitor’s products, even when they are patented, thus bringing a steady flow of innovations to the marketplace. It should not be discouraged by punitive damage awards except in cases where conduct is so obnoxious as clearly to call for them. The world of competition is full of ‘fair fights,’ of which this suit seems to be one.� – emphasis in original – finding infringement was not willful)
Comment by Bob Matthews — May 30, 2006 @ 11:58 am
[…] Justice Breyer invokes both themes here … the importance of finding the right balance between too little patent protection and too much, and the value to patent law of generalism. The Bonita Boats decision, recall, struck down a Florida state statute that protected vessel hull designs from copying, on the ground that the Florida law conflicted with, and was thus preempted by, the Patent Act. I blogged some excerpts from Bonito Boats here. […]
Pingback by The Fire of Genius » Justice Breyer’s take on LabCorp v. Metabolite — June 25, 2006 @ 1:44 pm