KSR – Other Analyses [ Updated ]
I’ll collect links to other analyses of KSR that I find helpful or interesting. And I’ll update the post throughout the next day or two.
- Michael Barclay (of Wilson Sonsini), at SCOTUSblog
- Dennis Crouch, at PatentlyO
- The Wikipedia page about the case
- Dan Bromberg (of Quin Emanuel), at SCOTUSblog
- Peter Zura, at 271 Blog
- Stephen Albainy-Jenei, at Patent Baristas
- Greg Mandel, at PatentlyO
- Fred Yen, at Madisonian
- Shubha Ghosh, at PatentlyO
- Jim Rapoza, at eWeek
- Kevin Noonan, at Patent Docs
- [ ... ]
Barclay says the SCOTUS “abolished the TSM test” and Bromberg describes the KSR decision as “sweeping away” the TSM test. But Zura says “the SCOTUS has whittled back” the TSM test. And Albainy-Jenei states that “while the Supreme Court knocked” the TSM test “down a notch, it didn’t reject it outright.” At the other end of the spectrum, Mandel writes that the court’s “decision itself appears to leave the TSM requirement roughly intact .”
As if it were not plain enough from the murkiness of the opinion itself, the diversity of views of these experts makes clear that the KSR decision, while providing specific analysis of the controversy before it, is vague and full of dicta regarding the details of the obviousness analysis more generally. As Mandel notes, I think correctly, “the contours of how to apply KSR will have to be worked out by the Patent Office, district courts, and the Federal Circuit.”
Joe, in an earlier post you describe the opinion as re-setting “the mood one should use in analyzing nonobviousness.” I think you’re correct. When the Justices at the Federal Circuit sit down to finish writing the decisions that are currently pending and consider future cases, we know what mood they will bring to their analysis, but do we have any idea as to how they will re-shape the details of the obviousness analysis? Any thoughts as to the reaction to the KSR decision at the Federal Circuit?
Comment by Rick — May 3, 2007 @ 11:05 am
Rick,
I don’t think the Federal Circuit will fully internalize the Supreme Court’s re-setting of the inquiry without another Supreme Court decision.
That said, I don’t think we’ll have to wait another 31 years to get one (as we did after Sakraida).
(And, for what it’s worth, my views are much closer to Barclay, Bromberg, and Albainy-Jenei.)
Best,
Joe
Comment by Joe — May 3, 2007 @ 11:38 am
Joe,
One other question. In part II A of the KSR decision, the court outlines a “familiar elements/ known methods/ predictable results” doctrine, which Adams, Anderson’s-Black Rock, and Sakraida are said to illustrate. These are not new cases, but I don’t recall this “caution-if-combination” doctrine. Is the court announcing a new doctrine or are they reviving an old doctrine? Thanks.
Rick
Comment by Rick — May 3, 2007 @ 1:16 pm
Rick,
They’re reviving an old one.
Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 152-53 (1950): “Courts should scrutinize combination patent claims with a care proportioned to the difficulty and improbability of finding invention in an assembly of old elements. … A patent for a combination which only unites old elements with no change in their respective functions, such as is presented here, obviously withdraws what already is known into the field of its monopoly and diminishes the resources available to skillful men.”
This is very passage from which the KSR Court quotes after stating the need for caution. Slip op. at pp. 11-12.
Joe
Comment by Joe — May 3, 2007 @ 1:49 pm
Further to my comment above, Chisum discusses “combination inventions.” The following passage sounds not all that different from the “familiar elements/ known methods/ predictable results†doctrine outlined in KSR.
With regard to combination claims, “two fact patterns frequently recur. In one pattern, a new combination achieves a clear and advantageous result, which usually provides an inference of patentability. However, the improvement is attributable to the presence of an improved element recently developed by someone else. Such a combination should not be patentable if the new combination is but a natural use for the improved element. In the other pattern, the new combination provides similarly advantageous results. However, the new combination is the obvious technological response to a newly discovered problem or need. Such a combination should not be patentable because the patent system is only directed to new achievements in technology.” Chisum 5.04[5][c][iv]
Comment by Rick — May 3, 2007 @ 1:50 pm
Thanks.
Comment by Rick — May 3, 2007 @ 1:51 pm