What do you think is the most important law review article about patent law that was published in the 1980s?

What do think is the most important law review article about patent law that was published in the 1960s?

Today, in Agrizap, Inc. v. Woodstream Corp. (Fed. Cir. May 28, 2008), the Federal Circuit overturned a jury verdict of nonobviousness. The claimed invention is a rodent electrocution trap, U.S. Patent No. 5,949,636. The key difference between the ‘636 trap and the key prior art trap (a trap the patentee sold more than a year before the ‘636 patent’s filing date) is that the prior art trap used a mechanical switch and the claimed trap uses a resistive switch.

The Federal Circuit’s analysis employs a post-KSR presumptive obviousness framework that I think we’ll see quite a bit of in the coming years. Here’s the entirety of the court’s substantive analysis of the nonobviousness question:

This is a textbook case of when the asserted claims involve a combination of familiar elements according to known methods that does no more than yield predictable results. KSR, 127 S. Ct. at 1739. The only difference between the Gopher Zapper and the asserted claims, as conceded by Agrizap, is the type of switch used to complete the circuit that triggers the generator. The asserted claims simply substitute a resistive electrical switch for the mechanical pressure switch employed by the Gopher Zapper. As illustrated by the Dye and Madsen patents, the use of an animal body as a resistive switch to complete a circuit for the generation of an electric charge was already well known in the prior art. In favoring resistive switches over mechanical switches, both the Dye and Madsen patents are directed to solving the same problem as the ’636 patent—the malfunction of mechanical switches in environments prone to dirt and dampness. See ’746 patent col.1 ll.43-46, ll.53-63; ’809 patent col.1 ll.31-55.

In this case, the objective evidence of nonobviousness simply cannot overcome such a strong prima facie case of obviousness. Similarly, in Leapfrog Enterprises, Inc. v. Fisher-Price, Inc., we held that the objective considerations of nonobviousness presented in that case, including substantial evidence of commercial success, praise, and long-felt need, were inadequate to overcome a strong showing of primary considerations that rendered the claims at issue invalid. 485 F.3d 1157, 1162 (Fed. Cir. 2007). Based on the foregoing, we reverse the district court’s denial of Woodstream’s motion for JMOL as to the obviousness of the asserted claims.

An interesting article from Chandler Burr in today’s New York Times, about the invention of scent molecules in the perfume trade.
Here’s the first paragraph:

Its scent is reminiscent of a mixture of a just-picked apple and a rose in its prime. But to the Takasago International Corporation, which manufactures this synthetic material, it smells even sweeter.

As they say, read the whole thing!

( I wonder if the perfume folks are as agitated about patent reform as big pharma … )

The Federal Circuit has taken In re Bilski, the patentable subject matter case, en banc.

According to the September 2006 BPAI decision rejecting Bilski’s claims on section 101 grounds, Claim 1 is as follows:

1. A method for managing the consumption risk costs of a commodity sold by a commodity provider at a fixed price comprising the steps of:

(a) initiating a series of transactions between said commodity provider and consumers of said commodity wherein said consumers purchase said commodity at a fixed rate based upon historical averages, said fixed rate corresponding to a risk position of said consumer;

(b) identifying market participants for said commodity having a counter-risk position to said consumers; and

(c) initiating a series of transactions between said commodity provider and said market participants at a second fixed rate such that said series of market participant transactions balances the risk position of said series of consumer transactions.

The Federal Circuit en banc order asks for a supplemental brief from each of the parties, Bilski and the PTO, by March 6, 2008. Amici can file briefs “30 days thereafter.” By my count, that would put the amicus brief deadline on Saturday, April 5. And under Fed R App P 26(a)(3), that Saturday becomes the next Monday, April 7.

Here are the questions in the court’s en banc order:

1. Whether claim 1 of the 08/833,892 patent application claims patent-eligible subject matter under 35 U.S.C. § 101?
2. What standard should govern in determining whether a process is patent-eligible subject matter under section 101?
3. Whether the claimed subject matter is not patent-eligible because it constitutes an abstract idea or mental process; when does a claim that contains both mental and physical steps create patent-eligible subject matter?
4. Whether a method or process must result in a physical transformation of an article or be tied to a machine to be patent-eligible subject matter under section 101?
5. Whether it is appropriate to reconsider State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368 (Fed. Cir. 1998), and AT&T Corp. v. Excel Communications, Inc., 172 F.3d 1352 (Fed. Cir. 1999), in this case and, if so, whether those cases should be overruled in any respect?

Although the courts order doesn’t mention it, the closest analogue in the court’s recent section 101 cases appears to me to be In re Comiskey (Sept. 2007).

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.

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.