Putting the law (back) in patent law
Earlier today, I gave a talk to the Oregon Patent Law Association. I discussed the Supreme Court’s patent law decisions for the October 2005 Term, just concluded. The title of the talk was the same as the title of this post.
In what ways is the Supreme Court putting the law (back) in patent law, you ask? Well, it’s putting the law in “patent law” by shaping patent doctrine according to its generalist perspective. Thus, for example, in the eBay case, the Court opens its opinion by framing the injunction issue as a matter of making patent law more like the general federal law of permanent injunctions:
Ordinarily, a federal court considering whether to award permanent injunctive relief to a prevailing plaintiff applies the four-factor test historically employed by courts of equity. Petitioners eBay Inc. and Half.com, Inc., argue that this traditional test applies to disputes arising under the Patent Act. We agree and, accordingly, vacate the judgment of the Court of Appeals.
Its putting the law back in patent law in the sense that the Supreme Court is continuing its more recent trend of deciding more patent law cases each Term. On this phenomenon, the indispensable reference is John F. Duffy, The Festo Decision and the Return of the Supreme Court to the Bar of Patents, 2002 Supreme Court Review 273.
If you’re interested, you can look at my PowerPoint slides for the talk.
Having heard Joe’s talk, I can attest that it was excellent.
Thank you for the cite to the Duffy article. In an earlier comment, however, you say: “The teaching/suggestion/motivation test will not survive KSR unchanged. It may not survive it at all.” I haven’t quite finished the Duffy article, but one of his themes is that “because patent law is a fairly technical system of property rights, the Court has always behaved conservatively in the area, accepted doctrinal changes only incrementally, and looked to specialized actors to take the lead in developing the law.” (See p. 285.) I agree with the first part of your comment that the suggestion test will not survive unchanged, but if Duffy is right, I suspect that your remark that it may not survive at all goes a little too far. Don’t you think that the Court is much more likely to make an incremental change to the suggestion test than it is to eliminate the test?
Comment by Rick Wilhelm — July 3, 2006 @ 6:38 am
Rick,
I think the tension you point to, between incrementalism as a general approach and the grant in KSR (which raises a profound, non-incremental question), is real. And the Duffy quote you offer contains the same tension, when applied to the KSR case. He says the Court has “looked to specialized actors to take the lead in developing the law.” With respect to the analytic framework for nonobviousness, two of the specialized actors – the PTO, and the Solicitor General of the U.S. – are speaking with one voice (in the SG’s brief recommending cert) to say, “The suggestion test must go.” Of course, the other major specialized actor – the Federal Circuit – is saying the opposite. It’s hard to proceed incrementally when confronted with this deep a disagreement about so fundamental a question.
Now, having said that, an incremental change isn’t out of the question. Perhaps, for example, the Court will find a way to make the notion of implicit, undocumented suggestion a far more robust and commanding concept than it has been at the Federal Circuit. But I don’t think this is likely.
And thanks for the compliment on the talk. It was great fun.
Comment by Joe — July 3, 2006 @ 7:04 am
Rick,
Another pointer that indicates a big change is likely in KSR: both Justice Kennedy (in his eBay concurrence) and Justice Breyer (in his dissent from the DIG in LabCorp) draw support from the Federal Trade Commission’s October 2003 report, entitled “To Promote Innovation: The Proper Balance of Competition and Patent Law & Policy,” a jumbo report that is highly critical of many aspects of current patent law doctrine and practice. The FTC, which we might think of as another of Professor Duffy’s “specialized actors,” is especially critical – in ch. 4 of the report – of the suggestion test. That makes four justices who are looking to the FTC report for guidance about patent law questions.
Joe
Comment by Joe — July 3, 2006 @ 11:05 am
Joe,
I’m trying to understand what the Court may do in KSR. As a result of your first comment, I took a look at the SG’s brief recommending cert. And as a result of your second comment, I plan to take a look at the FTC report. Thank you. These papers help. Anything else I need to add to my reading list?
Maybe a big change in the law is coming, but I think that an incremental change would be enough to have a big impact. For instance, I think the change in eBay is going to have a large impact, but I wouldn’t call it a large shift in the law. (I’m not sure how the Federal Circuit got away from the 4 factor equitable test in the first place, but that is another subject.) The SG characterizes the Federal Circuit’s suggestion test as “the exclusive means of showing obviousness.” I’m not sure I agree, but even if that’s right it seems to me the Court could retain the suggestion test, while modifying its role as the exclusive way to show a teaching or motivation. If the problem is affirmative evidence of a suggestion or motivation to combine known elements is lacking “because 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 had need to or incentive to record the trivial extension of the art” (see p. 14 SG’s brief), the Court could resolve the problem by providing one or more mechanisms for developing such evidence. Such mechanisms would be alternatives to the suggestion test. And, depending on how far your want to swing the pendulum, allocate the burden of developing the evidence accordingly. The generalist Court could spell out general principles, e.g., hindsight analysis needs to be avoided, leaving it to the specialized actors to work out the specifics. I think Duffy makes the point that the Supreme Court doesn’t usally take the lead in developing new aspects of the patent law. If in 5-10 years, we still have a problem, the Court can make further incremental changes.
Further, if you’re one of the Justices who think that there are a lot of dubious patents out there, why would you want to take away one of the tools that can be used to show obviousness. Undoubtedly, there are numerous situations where the PTO does not grant a patent precisely because it can point to a teaching to make a particular combination that was documented in the prior art.
Comment by Rick Wilhelm — July 3, 2006 @ 4:20 pm
Rick,
You can download a pdf copy of the FTC’s report here. Chapter 4, as I mentioned, is the one most focused on the suggestion test.
Taking the last bit of your comment first, I don’t mean to indicate that the Court should hold that proof of a suggestion is insufficient to prove an invention would have been obvious. Far from it. Thus, I agree that one wouldn’t want to take away one of the methods that can be used to show an invention would have been obvious to the ordinary artisan (namely, proof of a suggestion).
The tough question is, as you indicate in your middle paragraph, what to do when there is no documented proof of a suggestion. Your ideas certainly have the ring of incrementalism to them, so perhaps the Court will take something like that approach. Even your incrementalism, however, entails abandoning the notion that proof of a suggestion – most often, documented proof – is the exclusive means of showing an invention would have been obvious. And this latter notion has been bedrock Federal Circuit law since 1983 (in cases written by Chief Judge Markey, like Environmental Designs and Stratoflex). [ In that sense, I suppose I agree with the SG's description of current Federal Circuit law. ]
In any event, I’m still tinkering with an approach I offered, in rough outline, in an earlier post.
Comment by Joe — July 3, 2006 @ 5:38 pm
[...] There’ve been some fun, interesting exchanges in the comments over the last few days, especially on the posts about Putting the Law (Back) in Patent Law, Generalist Judging in Patent Law, and Toward a New Nonobviousness Analysis. [...]
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