A potentially interesting fact about the database of Board of Patent Appeals & Interferences decisions available on Westlaw:

From 4/30/2007 (i.e., the date KSR issued) to now (which is 269 days), the phrase “common sense” appeared at least once in 233 BPAI opinions.

In the 269 days ending 4/29/2007 (the day before KSR), the phrase “common sense” appeared at least once in 58 BPAI opinions.  (That’s a 364% increase.)

Coincidence?  Hard to say …

You can pull down a copy of the BPAI’s remand decision(s) in In re Lee here.  The copy is a pdf; it starts with the Board’s denial of rehearing, and continues with the Board’s June 2006 remand decision.  The Federal Circuit affirmed the Board’s decision yesterday, as I noted.

A validly issued, well-crafted patent is a great good thing.  An erroneously issued, overbroad patent is a terrible, anticompetitive thing.  “Getting it right” is important, and there are many reasonable arguments on all sides of the complex implementation questions.

Is there a tie breaker in some of these policy debates, a default position to which we can return when we’re not precisely sure how best to proceed?  Like it or not, the Supreme Court has clearly used competition (and a right to copy) as our default.  To take a few examples:

Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23, 33 (2003): “‘In general, unless an intellectual property right such as a patent or copyright protects an item, it will be subject to copying.’ TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 29 (2001).”

TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 29 (2001): “Trade dress protection must subsist with the recognition that in many instances there is no prohibition against copying goods and products. In general, unless an intellectual property right such as a patent or copyright protects an item, it will be subject to copying. As the Court has explained, copying is not always discouraged or disfavored by the laws which preserve our competitive economy. Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 160 (1989). Allowing competitors to copy will have salutary effects in many instances. ‘Reverse engineering of chemical and mechanical articles in the public domain often leads to significant advances in technology.’ Id.”

Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 213 (2000): “The fact that product design almost invariably serves purposes other than source identification not only renders inherent distinctiveness problematic; it also renders application of an inherent-distinctiveness principle more harmful to other consumer interests. Consumers should not be deprived of the benefits of competition with regard to the utilitarian and esthetic purposes that product design ordinarily serves by a rule of law that facilitates plausible threats of suit against new entrants based upon alleged inherent distinctiveness.”

Pfaff v. Wells Electronics, Inc., 525 U.S. 55, 63 (1998): “As we have often explained, most recently in Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 151 (1989), the patent system represents a carefully crafted bargain that encourages both the creation and the public disclosure of new and useful advances in technology, in return for an exclusive monopoly for a limited period of time. The balance between the interest in motivating innovation and enlightenment by rewarding invention with patent protection on the one hand, and the interest in avoiding monopolies that unnecessarily stifle competition on the other, has been a feature of the federal patent laws since their inception.”

Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 156-57 (1989): “Both the novelty and the nonobviousness requirements of federal patent law are grounded in the notion that concepts within the public grasp, or those so obvious that they readily could be, are the tools of creation available to all. They provide the baseline of free competition upon which the patent system’s incentive to creative effort depends. A state law that substantially interferes with the enjoyment of an unpatented utilitarian or design conception which has been freely disclosed by its author to the public at large impermissibly contravenes the ultimate goal of public disclosure and use which is the centerpiece of federal patent policy.”

This morning, the Federal Circuit affirmed the PTO’s remand decision in In re Lee rejecting the claims as invalid for obviousness; the case had been argued just 14 days ago, on Jan 8.  The court affirmed by a summary affirmance order, under Rule 36 … in other words, no opinion, just the word “Affirmed.”

In re Lee, in its prior trip to the Federal Circuit, gave the court a bit of a black eye: it was in Lee that the court opined that “[t]he ‘common knowledge and common sense’ on which the Board relied in rejecting Lee’s application are not the specialized knowledge and expertise contemplated by the Administrative Procedure Act. Conclusory statements such as those here provided do not fulfill the agency’s obligation.” 277 F.3d 1338, 1344 (Fed. Cir. 2002).

Compare KSR: “Rigid preventative rules that deny factfinders recourse to common sense, however, are neither necessary under our case law nor consistent with it.” 127 S. Ct. 1727, 1742-43.

I first posted the below item in November 2006.  I’m reposting it now in response to a comment made to a recent post.

So … here’s what I wrote in Nov 2006:

You file a patent application at the Patent & Trademark Office. Are you entitled to receive the patent unless the PTO can show you’re not entitled to it? Put another way, who gets the benefit of the doubt on patentability or not … you, or the PTO? Structural rules like this play a large role in driving outcomes, as any lawyer will tell you.

The case law says that, at least so far as novelty (sec 102) and nonobviousness (sec 103) are concerned, the applicant is entitled to the claim unless the PTO proves the contrary. The current approach is stated in, e.g., In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984). But the current disregard for any textual difference between sections 102 and 103 traces to In re Warner, 379 F.2d 1011, 1016-17 (CCPA 1967). Warner makes no effort to root in the text of section 103 the burden it places on the PTO to show obviousness (rather than placing on the applicant the burden to show nonobviousness).

Is the case law right? The issue comes to the fore now because, as PFF’s IPcentral has noted, petitioner KSR has filed its Reply Brief at the Supreme Court. (You can pull the brief at IPcentral.) Oral argument is Tuesday, November 28.

There’s a strong argument from statutory text that the case law is wrong. Here it is:

Section 102 begins, “A person shall be entitled to a patent unless … ,” and continues with a variety of scenarios that, if proved, would negate the applicant’s entitlement. This mandate, “shall be entitled … unless,” is quite clear.

How does section 103(a), the core nonobviousness requirement, compare? Well, it’s phrased quite differently: “A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if … .” Unlike section 102, which expressly mandates the applicant’s entitlement unless a negating condition is proved, section 103 commands that a patent can’t be obtained if a particular condition - obviousness - exists. Given that Congress knows how to put the burden on the PTO to show lack of entitlement (as in section 102), the fair reading of section 103’s quite different text is that it puts the burden on the applicant to show nonobviousness.

Petitioner KSR points out that this structural question plays an important role in its case. In doing so, it urges a rejection of the common, undefended (and indefensible?) (mis)reading of the statute. According to KSR, which calls the common reading “an upside down view of sec 103(a),”

[t]he key to understanding [Teleflex’s] argument is the radical, unstated premise on which it is based: that sec 103 purportedly does not state a “condition for patentability” that a patent applicant must satisfy before a patent can properly be granted, but rather purportedly states a condition for challenges to patentability that the PTO or an accused infringer must satisfy before a claim to patent protection can properly be denied.”

KSR Reply Brief at 10 (emphases in original). Strong stuff.

So, we have another issue to watch for in the KSR case … will the Supreme Court state that an applicant has the burden to show nonobviousness, or that the PTO has the burden to show obviousness?

I’ve just posted a new essay on SSRN.  It’s entitled “Level of Skill and Long-felt Need: Notes on a Forgotten Future.”

Here’s the abstract:

The Supreme Court’s KSR decision transforms the way we think about patent law’s ordinary artisan.  The ordinary artisan, the Supreme Court states, “is also a person of ordinary creativity, not an automaton.”  This transformation, which sweeps aside a contrary precept that had informed the Federal Circuit’s nonobviousness jurisprudence for a generation, raises a key question: How do we fill out the rest of our conception, in a given case, of the ordinary artisan’s level of skill at the time the invention was made?  Reaching back to a large vein of case law typified by Judge Learned Hand’s decisions about nonobviousness, as well as an all-but-forgotten nonobviousness bill that died in committee in 1948, I show that the modern “level of skill” inquiry can comfortably rely on evidence of long-felt, unmet need in the art and the failure of others to meet that need.  For it remains true, as Judge Hand once observed, that “the best test of what persons of routine ingenuity can do is what they have  done.”

If you would like to download a pdf of the essay, please follow the link to SSRN.  And I welcome any feedback you care to offer on the paper.

Moving this post to the head of the page …

As I’ve mentioned, I’ve been reading lots of old appellate cases that resolve the nonobviousness question by relying heavily on the presence (or absence) of evidence of long-felt, unmet need before the claimed invention’s arrival. From that reading, I’ve developed a lengthy list of excerpts from the cases (both U.S. Supreme Court cases and U.S. Court of Appeals cases). Not surprisingly, Judge Learned Hand wrote the bulk of the excerpted cases. My list is available here as a pdf.

If you know of other long-felt need cases that should be on the list, please let me know

Here’s the thing …

Text without purpose is empty.  And purpose without text is blind.

“The best way to have a good idea is to have lots of ideas.” - Linus Pauling