c|net news has the story: a new peer-review web site for patents has launched. It’s called WikiPatents.

A quotation from the story:

But even the U.S. Patent and Trademark Office acknowledged recently that such judgments are no small feat. In a draft five-year strategic plan released last week, officials solidified their intention to develop a “peer review mechanism” that would enlist volunteers from the public to weigh in on applications and ease the burden on its own staff.

Responding to that call for collaboration, a patent attorney and an accountant based in Salt Lake City on Monday launched WikiPatents.com. Sporting a star-based rating system reminiscent of those used for movie criticism, it’s designed in part to help patent examiners, attorneys, litigants, would-be investors, inventors and other interested outsiders decide whether already-issued patents deserve such a designation.

RTWT.

A fantastic! post today from Carl Christensen, at PropertyProf Blog, about the Rule of Capture as applied to whales.  Check it out!

The Computer & Communications Industry Association’s amicus brief in support of KSR is short and sweet. Like KSR’s brief, the SG’s brief, and my own musings on the topic, the CCIA urges the Court to take a more favorable view of the PHOSITA’s ordinary inventive and creative skills.

The CCIA argues as follows:

The suggestion test also marginalizes the “person having ordinary skill in the art” in contravention of Graham and Section 103. The Federal Circuit has belittled the hypothetical PHOSITA as a mere journeyman, “one who thinks along the line of conventional wisdom in the art and is not one who undertakes to innovate, whether by patient, and often expensive, systematic research or by extraordinary insights, it makes no difference which.”  Standard Oil Co. v. American Cyanamid Co., 774 F.2d 448, 454 (Fed. Cir. 1985).  The suggestion test goes further, implying that people having ordinary skill in information technology industries, for example, do not have the insight or skill to combine two references unless specifically instructed to do so.  In today’s intensely competitive economy, this makes no sense.  The operating level of competition and innovation is defined not by mediocrity as the Federal Circuit assumes but by the talents of hundreds of thousands of creative engineers worldwide.  See FTC Report, ch. 4 n. 70.  This is especially true for information technology, where convergence and integration are taken for granted.  The Federal Trade Commission (FTC) accordingly recommends that the suggestion test be modified to reflect the “creativity and problem-solving skills that in fact are characteristic of those having ordinary skill in the art.”  FTC Report, Exec. Summ. at 11-12 (Recommendation 3b).

CCIA Amicus Brief on the Merits at 9-10.  For my money, the Standard Oil case that the CCIA criticizes here is a misstep in the nonobviousness jurisprudence from which no end of trouble has flown.  As the saying goes, even Homer nods.

Love it or hate it, the Federal Circuit’s “suggestion test” approach to proving obviousness is a guard against the hindsight bias. Indeed, that’s the central reason the Federal Circuit states for using the test.

In KSR, advocates for eliminating the “suggestion test” increase their chances for success by helping the Supreme Court get a handle on the nature of, and possible responses to, this risk of hindsight bias.

The SG contends, in its amicus brief on the merits, that the hindsight bias problem is no worse in patent law than in other branches of law, and that awareness of the risk is itself a sufficient guard against the bias. Here’s the key passage:

The Federal Circuit’s rigid [suggestion] test underestimates the capacity of courts and the PTO to avoid the influence of hindsight. Retrospective analysis is not unique to patent law, but regularly arises in a wide variety of contexts, including the determination of the competency of counsel in criminal proceedings, reasonable use of force by police officers, and probable cause. In those situations, as in Graham, the Court has consistently recognized that decisionmakers can avoid the improper influence of hindsight by maintaining conscious awareness of its potentially distorting influence in the decisionmaking process. Courts routinely find, for example, an absence of probable cause in cases in which the police in fact find substantial quantities of contraband in a search. There is no reason to think that courts in patent cases cannot be similarly discerning.

SG Amicus Brief on the Merits at 21 (citations and footnote omitted).

The Progress & Freedom Foundation, in its amicus brief on the merits, tackles the hindsight bias challenge in a different way. According to PFF, the key is recognizing that the nonobviousness standard itself can’t do all the work of ameliorating hindsight bias. I quote at length from PFF’s brief below the fold. (more…)

The SG’s amicus brief on the merits in KSR is hard hitting, and a great read.

It makes a point about the PHOSITA’s inventiveness that’s close to the point KSR makes in its own brief (and that I’ve argued is a crucial point in creating a sensible, stable nonobviousness standard).

Here it is:

This Court’s decisions make clear that the nonobviousness inquiry ultimately depends heavily on an assessment of the expected capabilities, insights, and ingenuity of the hypothetical person “having ordinary skill in the art to which said subject matter pertains.”  35 USC 103(a).  …  The Federal Circuit’s test–which focuses attention exclusively on a search for teachings, suggestions, and motivations in the prior art–has misdirected the analysis away from that central inquiry.  The Federal Circuit’s test effectively assumes that the person of ordinary skill has little capability to combine prior art in the absence of specific teachings or suggestions.  The Federal Circuit’s systemic diminishment of the role of the person of ordinary skill and its miserly assessment of that person’s capabilities has distorted the Graham framework. The Court should reiterate that the role of the hypothetical person of ordinary skill is critical in the nonobviousness inquiry and that the person is understood to have “an ability to combine and modify prior art references that is consistent with the creativity and problem-solving skills that in fact are characteristic of those having ordinary skill in the art.”  FTC Report, ch. 4, at 15.

SG’s Amicus Brief on the Merits at 25.

In a word, Wow!  Great stuff ….

Last week, the briefs on KSR’s side of the Supreme Court’s upcoming nonobviousness case, KSR v. Teleflex, hit the Court … and the blogs.

One question that a party, and the Court, should answer is, “What kind of obvious inventions does the PHOSITA make?”  Put another way, “What does the PHOSITA invent?”  If we can answer this question in general terms, we’ll have reference point for determining whether a given invention would have been obvious or not.

KSR’s brief on the merits, in my favorite passage in the brief, answers the question this way:

That which is “obvious” to the statutory “person having ordinary skill in the art” includes far more than what a skilled person might be motivated to make at a given point in time.  The statutory person having ordinary skill in the art is deemed by law to know how to deploy existing technology for its known uses and capabilities, and to know what a “mere aggregation” of pre-existing components will comprise.  These are the premises behind the Court’s repeated holdings that a patent cannot rightly issue for “a combination which only unites old elements with no change in their respective functions.

KSR Merits Brief at 26.

In my post of May 30, offering a framework for analyzing nonobviousness, I began from a similar premise:

People of ordinary skill in an art come up with new inventions all the time. If they didn’t, we wouldn’t need (or want) a nonobviousness requirement to thresh the big-advance-wheat from the little-advance-chaff. I therefore begin from the premise that the person of ordinary skill in the art — any art — has a basic ability to creatively recombine and reconfigure the basic building blocks, or elements, in her art. When doing so, the POSITA recombines and reconfigures the building blocks according to their typical functions and roles (as well as any functions the art may expressly suggest, although such express suggestion isn’t necessary, and may not even be that common). So far as I can tell, getting the POSITA’s baseline creative ability right is the single most important step in the analysis, and getting it wrong is what, in the view of many, has sent the Federal Circuit so far astray. [Note: This basic creative ability is what the Federal Circuit’s suggestion test improperly denies to the PHOSITA. By doing so, the Federal Circuit has effectively cut the nonobviousness requirement back to a supernovelty requirement.]

A good primer on the case, and the issue, from Henry Su by way of Law.com.

A great story in today’s New York Times about LibriVox, a project to make public domain books available in audio form.

From the LibriVox homepage:

LibriVox volunteers record chapters of books in the public domain and release the audio files back onto the net (via podcast and catalog). Our goal is to make all public domain books available as free audio books. We are a totally volunteer, open source, free content, public domain project.

Check it out.  Volunteer!

Seven years ago, in Lyons Partnership v. Giannoulas, 179 F.3d 384 (5th Cir. 1999), the U.S. Court of Appeals for the Fifth Circuit upheld summary judgment in favor of accused infringer Giannoulas in a trademark infringement case brought by the owner of the rights in Barney the Purple (and Annoying) Dinosaur.

The case arose out of the Barney Empire’s displeasure with the parody of Barney that Giannoulas, otherwise known as The Chicken (that madcap sporting event entertainer), put in his act. Two delicious paragraphs from the Fifth Circuit’s opinion:

And so, perhaps inevitably, the Chicken’s beady glare came to rest on that lovable and carefree icon of childhood, Barney. Lyons argues that the Chicken’s motivation was purely mercenary. Seeing the opportunity to hitch his wagon to a star, the Chicken incorporated a Barney look-alike into his acts. The character, a person dressed in a costume (sold with the title “Duffy the Dragon”) that had a remarkable likeness to Barney’s appearance, would appear next to the Chicken in an extended performance during which the Chickenwould flip, slap, tackle, trample, and generally assault the Barney look-alike.

… The sketch would begin with the Chicken disco dancing. The Barney character would join the Chicken on the field and dance too, but in an ungainly manner that mimicked the real Barney’s dance. The Chicken would then indicate that Barney should try to follow the Chicken’s dance steps (albeit, by slapping the bewildered dinosaur across the face). At this point, Barney would break character and out-dance the Chicken, to the crowd’s surprise. The Chicken would then resort to violence, tackling Barney and generally assaulting Barney. Barney would ultimately submit to the Chicken and they would walk off the field apparently friends, only for the Chicken to play one last gag on the back-in-character naive and trusting Barney. The Chicken would flip Barney over a nearby obstacle, such as a railing.

“Barney would ultimately submit to The Chicken,” indeed. On the question of parody, the Fifth Circuit concluded as follows: “We therefore agree with the district court that Giannoulas’s use of the caricature clearly qualifies as a parody. We note that Lyons’s insistence that the Chicken’s act is not a parody is, in our view, a completely meritless argument.” Memo to Barney’s lawyers: Ouch!
Why am I writing about this seven year old case now?

Because Barney’s lawyers don’t appear to have learned anything from the sound drubbing The Chicken delivered.

c|net news reports on a new suit filed by the Electronic Frontier Foundation to stop the Barney lawyers from sending more baseless, threatening letters to a parody website. From the story:

EFF and the Akin Gump law firm are representing Stuart Frankel, who maintains the “Source of All Evil” site with a rendering of a vaguely Satanic cartoon tyrannosaur. Frankel writes: “The Barney Creature is a voracious, bottomless pit. All who oppose it with ridicule must be destroyed.”

Matthew Carlin, an associate at the New York firm of Gibney Anthony and Flaherty, sent at least four threatening e-mail messages to Frankel starting in February 2002. Each demands the removal of the Barney pages and threatens immediate legal action unless the pages are deleted.

EFF has its own web page devoted to the suit. If you want to see a copy of the complaint, you can get it there.

And let me take the opportunity to point, once again, the Brennan Center report entitled “Will Fair Use Survive?”, which you can read about and download here.

The indefatigable Dennis Crouch has it all, at Patently-O.

Over the next few days, as I work through the briefs filed in support of KSR’s position filed this past Tuesday, I will share some excerpts and some commentary on the briefs here at TFOG.

UPDATE 1:  Dennis notes with interest that it appears there are no amicus briefs supporting KSR from pharma or biotech.  It’s also interesting, to me, that there appear to be none from the financial services industry.  We’ll have to wait to see whether we’re aware of all the amicus briefs.  As of a moment ago, the Supreme Court’s electronic document doesn’t yet reflect all the briefs Dennis has collected.