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?

Here’s the thing …

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

Lon Fuller’s The Morality of Law (rev. ed. 1969) makes some engaging points about statutory interpretation. And, along the way, he develops an analogy I haven’t seen anywhere else in the statutory interpretation, comparing statutory interpretation to a surviving son’s effort to complete his deceased father’s unfinished invention. (In other words, he combines two of my favorite topics!)

After endorsing the Rule in Heydon’s Case (also called the Mischief Rule) as an interpretive framework, and offering a friendly amendment to it (p. 83 – “If any criticism can be made of this analysis, it is that it should have included a fifth point to be ‘discerned and considered,’ which might read somewhat as follows: ‘How would those who must guide themselves by its words reasonably understand the intent of the Act, for the law must not become a snare for those who cannot know the reasons of it as fully as do the Judges.’”), he offers this purposivist approach:

… An inventor of useful household devices dies leaving the pencil sketch of an invention on which he was working at the time of his death. On his deathbed he requests his son to continue work on the invention, though he dies without having had a chance to tell the son what purpose the invention was to serve or anything about his own plans for completing it. In carrying out his father’s wish the son’s first step would be to decide what the purpose of the projected invention was, what defect or insufficiency of existing devices it was intended to remedy. He would then try to grasp the underlying principle of the projected invention, the ‘true reason of the remedy’ in the language of Heydon’s Case. With these problems solved he would then proceed to work out what was essential to complete the design for the projected device.

Let us now ask of the son’s action questions of the sort commonly asked concerning the interpretation of statutes. Was the son faithful to his father’s intention? If we mean, ‘Did he carry out an intention the father had actually formed concerning the manner of completing the design?’ why, of course, the question is quite unanswerable for we do not know whether the father had any such intention, and if so, what it was. If we mean, ‘Did he remain within the framework set by the father, accepting the father’s conception of a need for the projected device and his father’s general approach to the problem of supplying that need?’ then the answer, on the facts supposed, is yes. If the son were able to call on his father’s spirit for help, the chances are that this help would take the form of collaborating with the son in the solution of a problem the father had left unsolved. So it is usually with difficult problems of interpretation. If the draftsman of a statute were called into direct consultation, he would normally have to proceed in the same manner as the judge by asking such questions as the following: Does this case fall within the mischief which the statute sought to remedy? Does it fall within the ‘true reason of the remedy’ appointed by the statute, that is, is the prescribed remedy apt for dealing with this particular manifestation of the general mischief at which the statute was aimed?

pp. 84-85. Note the invocation of collaborative partnership, rather than the (far more common) faithful agent approach (e.g., Judge Posner’s analogy to the Army captain who receives a truncated command by radio and must decide what to do).

Fuller also makes the following crucial point about the reciprocity between legislature and judiciary that undergirds a body of law worthy of the name:

With all its subtleties, the problem of interpretation occupies a sensitive, central position in the internal morality of the law. It reveals, as no other problem can, the cooperative nature of the task of maintaining legality. If the interpreting agent is to preserve a sense of useful mission, the legislature must not impose on him senseless tasks. If the legislative draftsman is to discharge his responsibilities he, in turn, must be able to anticipate rational and relatively stable modes of interpretation. This reciprocal dependence permeates in less immediately obvious ways the whole legal order. No single concentration of intelligence, insight, and good will, however strategically located, can insure the success of the enterprise of subjecting human conduct to the governance of rules.

p. 91

In this way, Fuller prefigures a point explored by Richard Pildes in his 1982 law student note in the Harvard Law Review, 95 Harv. L. Rev. 892 (1982). Pildes sought, in effect, to answer the question, what statutory interpretation approach by the judiciary legitimates the policy supremacy of the legislature? (The daring feature of Pildes’s project is, of course, the notion that legislative supremacy is as much in need of legitimation as is judicial interpretation of statutes.) It seems reasonably clear that Fuller would have answered something like, “Purposivism.” To which one can add: So much the better for purposivism. (See also Fuller at p. 106: “[L]aw is the enterprise of subjecting human conduct to the governance of rules. Unlike most modern theories of law, this view treats law as an activity and regards a legal system as the product of a sustained purposive effort.” ; and at p. 146: “A statute is obviously a purposive thing, serving some end or congeries of related ends.”)

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?

Whatever a person sows, that also shall he reap.

Hence, the Federal Circuit’s claim construction decision today in Inpro v. T-Mobile.

There’s great discussion of the case at Patently-O, including comments from a number of folk highly critical of the decision’s narrow reading of the patent claim term at issue. Patent Prospector also has some sharp observations about the case.

As I read the case, the court’s construction seems entirely predictable and unsurprising. A patentee cannot, in the body of the patent itself, denigrate a feature of the prior art as a “big drawback” (the phrase used in the patent in this case) and then expect a claim term to cover that feature (unless there’s no way for the court to escape that construction).

What does surprise me is the bitter tone in some of the comments at Patently-O. The court’s approach in Inpro is exactly what the Specification Firsters were baying for in Philips v. AWH, isn’t it? The specification provides the most important context for what the claim terms mean. Here, the panel unanimously concludes, in agreement with the district court, that the common sense reading of this claim term is the narrow one the accused infringer urges (not the broader one the patentee urges).

Would the Texas Digital approach, rejected in Philips, have yielded the construction the patentee urges here? It’s certainly possible, perhaps even likely. In any event, no legal approach will please the “patentees should always win” crowd, because law can’t make winners out of patentees with lousy arguments. I share Patent Prospector’s impression: “The simple fact is that Inpro should never have taken this to court. Inpro should have seen this narrow claim construction coming; the evidence is overwhelming. This is a sorry instance of ‘the best day for the plaintiff is the day they file.’”