The Patent Office has long had the power to promulgate procedural rules for patent prosecution. Specifically, 35 U.S.C. 2(b)(2)(A) gives the Office the power to “establish regulations, not inconsistent with law, which … shall govern the conduct of proceedings in the Office.” (The Patent Office has had this power since the mid-1800s.)

The main proceeding of interest here is, of course, patent examination. The Office has, to date, made far too little of its power over procedure. It could, for example, conduct a comprehensive review of the best way to structure the process of proof to yield reliable, efficient determinations about nonobviousness … and issue binding regulations that create the proof process for all applications. If a series of presumptions makes sense, so be it; if different approaches are better for different types of art, that’s fine too. The key point is this: The Patent Office should make full use of its plenary power over prosecution procedure to make the most of the Supreme Court’s guidance about nonobviousness in KSR. Don’t wait for the Federal Circuit to sort through a few hundred cases; you, PTO, can take a systemic view to rationalize prosecution in tens of thousands of cases.

From slip op. 22-23:

We need not reach the question whether the failure to disclose [the] Asano [prior art reference] during the prosecution of [the] Engelgau [patent in suit] voids the presumption of validity given to issued patents, for claim 4 is obvious despite the presumption. We nevertheless think it appropriate to note that the rationale underlying the presumption - that the PTO, in its expertise, has approved the claim - seems much diminished here.

Ouch!

The Supreme Court has breathed life into a theory of obviousness that the Federal Circuit has long rejected - namely, the theory that an invention would have been obvious because it would have been obvious for the ordinary artisan to try it out. [ A leading Federal Circuit case is In re O’Farrell, 853 F.2d 894, 903 (1988). ]

Here’s the Supreme Court’s take …

The idea that a designer hoping to make an adjustable electronic pedal would ignore [the] Asano [prior art reference] because Asano was designed to solve the constant ratio problem makes little sense. A person of ordinary skill is also a person of ordinary creativity, not an automaton.

The same constricted analysis led the Court of Appeals to conclude, in error, that a patent claim cannot be proved obvious merely by showing that the combination of elements was ‘obvious to try.’  When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp.  If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.  In that instance the fact that a combination was obvious to try might show that it was obvious under section 103.

Slip op. at 17.

In other words, a patent claim can be proved obvious merely by showing that the combination of elements was obvious to try.  I think, too, that the robust “reasonable expectation of success” aspect of the Federal Circuit’s nonobviousness jurisprudence is now largely untenable.

Much of what the new KSR opinion does is re-set the mood one should use in analyzing nonobviousness.

For example, at the start of its analysis, the Court reaffirms that we should adopt a skeptical mood when considering the obviousness (or not) of a combination claim: “Neither the enactment of section 103 nor the analysis in Graham disturbed this Court’s earlier instructions concerning the need for caution in granting a patent based on the combination of elements found in the prior art. … The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” Slip op. at 11-12 (emphasis added) (discussing Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp. (1950)). And in canvassing the evidence on the point, we should err in favor of considering it: the Court’s “cases have set forth an expansive and flexible approach,” and “Graham set forth a broad inquiry and invited courts, where appropriate, to look at any secondary considerations that would prove instructive.” Slip op. at 11.

The Court describes two points on the inventiveness continuum. On the one hand, “when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.” Slip op. at 12. On the other hand, “when the prior art teaches away from combining certain known elements, discovery of a successful means of combining them is more likely to be nonobvious.” Id.

It also synthesizes its post-Graham decisions (Adams, Anderson’s-Black Rock, and Sakraida) into the following backdrop, or mood, for combination claims:

When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, section 103 likely bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill. Sakraida and Anderson’s-Black Rock are illustrative - a court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions.

Slip op. at 13.

Say it with me now: “A person of ordinary skill is also a person of ordinary creativity, not an automaton.” Slip op. at 17. [ Put another way, we can bury - at long last - the ill-conceived Standard Oil Co. v. American Cyanamid Co., 774 F.2d 448, 454 (Fed. Cir. 1985). ]

Justice Kennedy’s opinion for the unanimous Court in KSR v. Teleflex is, I think, quite excellent. Like his opinion for the unanimous Court in Festo v. SMC (2002), Justice Kennedy’s KSR opinion makes great strides by getting back to basics, by returning to first principles.

One of the Court’s big innovations in the case is its clear embrace of the principle that ordinary artisans are creative, inventive people. Kathy Strandburg’s amicus brief for lawprofs in support of KSR stressed this principle, as did the SG’s brief in support of KSR (as, for that matter, did the FTC Report (ch. 4, p. 15)).

From the slip opinion …

p. 14 - “[T]he analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.”

p. 17 - “A person of ordinary skill is also a person of ordinary creativity, not an automaton.”

Almost a year ago, I expressed the hope that nonobviousness law would focus more on the inventive, creative capacity of the ordinary artisan. [ I also posted a few times on the question in August 2006, here, here, and here. ] I’m pleased to see the Court set us on the path of exploring, more deeply than we have to date, the ordinary artisan’s creativity.

They are accessible at SCOTUSblog.

It appears the Supreme Court has issued opinions this morning in both the Microsoft v. AT&T case (about the reach of 271(f)) and KSR v. Teleflex (about nonobviousness).  More later, after I’ve read the opinions.

Assume the Supreme Court, in its forthcoming KSR decision, rejects the Federal Circuit’s mandatory showing of a suggestion to combine (as a necessary element in a successful showing that an invention would have been obvious) in favor of a standard that, on balance, exposes more claims to successful obviousness challenges / rejections.

I have little doubt that many will assert the Supreme Court is becoming, or has already become, “anti-patent.” These same folk will probably point to last Term’s eBay decision and this Term’s MedImmune decision as supporting exhibits.

As it happens, I’m teaching the Doctrine of Equivalents right now in my basic Patent Law class. We read and discuss, among other things, the Supreme Court’s decisions in Warner-Jenkinson (1997) and Festo (2002). Anyone who thinks the Supreme Court is anti-patent has a tough time explaining these pro-Doctrine of Equivalents decisions. (To say nothing of the pro-patent protection decision in JEM Ag Supply v. Pioneer Hi-Bred (2001), where the Supreme Court held that plant seed is eligible for utility patent protection.)

One view (mine, on most days) - The modern Supreme Court isn’t pro-patent or anti-patent. It’s pro-balance, i.e., it sees patent protection as one part of a wider system of competition law that includes antitrust law and a basic default in favor of free competitive use of information. Put differently, patent law’s limitations are as integral to its success as its coverage.

Happy 87th Birthday, Justice John Paul Stevens. [ Hat tip to Prof. Dorf. ]

I am, I must say, a fan of Justice Stevens’ statutory interpretation methods. And so, a birthday quotation:

In recent years the Court has suggested that we should only look at legislative history for the purpose of resolving textual ambiguities or to avoid absurdities. It would be wiser to acknowledge that it is always appropriate to consider all available evidence of Congress’ true intent when interpreting its work product. Common sense is often more reliable than rote repetition of canons of statutory construction. It is unfortunate that wooden reliance on those canons has led to unjust results from time to time. Fortunately, today the Court has provided us with a lucid opinion that reflects the sound application of common sense.

Koons Buick Pontiac GMC, Inc. v. Nigh, 543 U.S. 50, 65 (2004) (Stevens, J., concurring) (footnotes omitted).

Here’s the text of the Senate version of the Patent Reform Act of 2007, numbered S. 1145.

And here’s the text of the House version of the Patent Reform Act of 2007, numbered H. 1908.