Comments on: KSR and the Doctrine of Equivalents http://www.thefireofgenius.com/2007/12/27/ksr-and-the-doctrine-of-equivalents/ Academic commentary about patent law, i.p. law, creativity, and more Mon, 13 Oct 2008 15:23:54 +0000 http://wordpress.org/?v=2.5 By: Paul Cole http://www.thefireofgenius.com/2007/12/27/ksr-and-the-doctrine-of-equivalents/#comment-116982 Paul Cole Sat, 12 Jan 2008 00:17:43 +0000 http://www.thefireofgenius.com/2007/12/27/ksr-and-the-doctrine-of-equivalents/#comment-116982 Has anybody else noticed that in KSR (a) the Supremes held that all courts should look at collocation/combination, but (b) they never applied that test to the facts before them but decided the case on other and more conventional grounds? One of their law clerks should be blushing by now! Has anybody else noticed that in KSR
(a) the Supremes held that all courts should look at collocation/combination, but
(b) they never applied that test to the facts before them but decided the case on other and more conventional grounds?

One of their law clerks should be blushing by now!

]]> By: Joe http://www.thefireofgenius.com/2007/12/27/ksr-and-the-doctrine-of-equivalents/#comment-115116 Joe Mon, 07 Jan 2008 16:28:48 +0000 http://www.thefireofgenius.com/2007/12/27/ksr-and-the-doctrine-of-equivalents/#comment-115116 Anon, I'm actually in the "sea change" camp. By "marginally," I didn't mean "only a little bit" (although I see it's reasonable to read it that way - sorry for the confusion). Rather, I meant that it shifts the likelihood over for everyone, so all the patent claims that were near the borderline are now over the borderline (into invalid territory). Of course, I can't definitively state (yet) whether it's a big change or not, because not enough time has gone by. Conceptually, it's a big change. The new PTO Guidelines, for example, reflect a large number of rationales for concluding that an invention would have been obvious (beyond the suggestion test). Is it a big change numerically? Again, I think it's too soon to tell. Best, Joe Anon,

I’m actually in the “sea change” camp. By “marginally,” I didn’t mean “only a little bit” (although I see it’s reasonable to read it that way - sorry for the confusion). Rather, I meant that it shifts the likelihood over for everyone, so all the patent claims that were near the borderline are now over the borderline (into invalid territory).

Of course, I can’t definitively state (yet) whether it’s a big change or not, because not enough time has gone by. Conceptually, it’s a big change. The new PTO Guidelines, for example, reflect a large number of rationales for concluding that an invention would have been obvious (beyond the suggestion test). Is it a big change numerically? Again, I think it’s too soon to tell.

Best,

Joe

]]> By: anonymousAgent http://www.thefireofgenius.com/2007/12/27/ksr-and-the-doctrine-of-equivalents/#comment-115106 anonymousAgent Mon, 07 Jan 2008 15:53:57 +0000 http://www.thefireofgenius.com/2007/12/27/ksr-and-the-doctrine-of-equivalents/#comment-115106 Joe, You wrote "KSR makes it marginally more likely that a given patent claim is unpatentable/invalid for obviousness." Earlier, many commentators argued that KSR is a SEA CHANGE. I have not been studying the results of KSR - which one is it? i.e. does KSR knock out a LARGE fraction of patents/patent applications, or is the change more subtle. Thanks, AnoymousAgent Joe,
You wrote “KSR makes it marginally more likely that a given patent claim is unpatentable/invalid for obviousness.”
Earlier, many commentators argued that KSR is a SEA CHANGE.
I have not been studying the results of KSR - which one is it?
i.e. does KSR knock out a LARGE fraction of patents/patent applications, or is the change more subtle.
Thanks,
AnoymousAgent

]]> By: step back http://www.thefireofgenius.com/2007/12/27/ksr-and-the-doctrine-of-equivalents/#comment-111655 step back Fri, 28 Dec 2007 11:45:47 +0000 http://www.thefireofgenius.com/2007/12/27/ksr-and-the-doctrine-of-equivalents/#comment-111655 KSR makes it marginally more likely that a judge (or examiner) who is no ordinary artisan by any stretch of reasonable imagination in a given art will nonetheless rule himself to be one despite lack of any evidence to support the proposition. KSR makes it marginally more likely that a judge (or examiner) who is no ordinary artisan by any stretch of reasonable imagination in a given art will nonetheless rule himself to be one despite lack of any evidence to support the proposition.

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