Wednesday, November 29, 2006

The meaning of the term “obvious” might not be obvious

The New York Times
Prior Art, Teaching, Skill? It Must Be a Patent Case

WASHINGTON, Nov. 28 — To be eligible for a patent, an invention must be novel, useful and, according to the statute, not “obvious” to a person of “ordinary skill” in the field. While the meaning of the term “obvious” might appear to be obvious, a lively and surprisingly entertaining Supreme Court argument on Tuesday demonstrated that it is anything but.

The question was how patent examiners and judges should evaluate the obviousness of a new product that combines, albeit in a novel way, two or more existing products. Since most inventions use elements of what patent law calls “prior art,” this case presents the court with what is widely viewed as its most important patent case in years.

The patent in dispute is for an adjustable gas pedal, designed to work in vehicles equipped with electronic engine controls. In the past, gas pedals that could be adjusted for the driver’s comfort worked mechanically. The new version, produced by a Canadian company, the KSR International Company, under contract to General Motors, combined an adjustable pedal with an electronic sensor.

Claiming that it had already patented such a product, a rival company, Teleflex Inc., sued. KSR argued that Teleflex’s patent was invalid because the combination of the two elements was obvious. A federal district judge in Detroit agreed, and dismissed the infringement suit.

But the United States Court of Appeals for the Federal Circuit, which has jurisdiction over all patent appeals, overturned that decision. It ordered the district court to reconsider the case under a test that makes obviousness harder to prove — and therefore makes patents easier to obtain and defend. It is the validity of that test that is at issue in the case, KSR International Co. v. Teleflex Inc., No. 04-1350.

The Federal Circuit’s test for obviousness is usually referred to as the teaching-suggestion-motivation test. Under the test, a patent cannot be rejected as obvious unless the party challenging it can show that at the time of the invention, there existed a “teaching, suggestion, or motivation” that would have led a person familiar with the field to put existing products together. Meeting that test often requires a jury trial, making patent litigation prolonged and expensive.

James W. Dabney, the lawyer representing KSR, told the justices that the Federal Circuit had improperly displaced “skill and ingenuity” as the benchmark for obtaining a patent and replaced it with what amounted to an “entitlement” to patent protection. But the Supreme Court itself “has rejected time and time again the notion that someone who was the first simply to take advantage of the known capability of technology was entitled to a patent,” he added.

The federal Patent and Trademark Office agrees with the critique and entered the case on the side of KSR. Thomas G. Hungar, a deputy solicitor general, told the justices that “as the sole means of proving obviousness, the teaching-suggestion-motivation test is contrary to the Patent Act, irreconcilable with this court’s precedents, and bad policy.”

Mr. Hungar added, “It asks the wrong question and, in cases like this one, it produces the wrong answer.”

But as Chief Justice John G. Roberts Jr. pointed out, the Federal Circuit had a rationale for adding its distinctive gloss to the concept of obviousness. “They say obviousness is deceptive in hindsight,” the chief justice observed to Mr. Dabney. “In hindsight, everybody says, ‘I could have thought of that,’ ” he said, adding that in the Federal Circuit’s view, “if you don’t have the sort of constraint that their test imposes, it’s going to be too easy to say that everything was obvious.”

The chief justice’s comment came early in the argument; any implication that he was sympathetic to the appeals court proved premature. When it came time for the lawyer for Teleflex, Thomas C. Goldstein, to take the podium, Chief Justice Roberts made clear his disdain for the Federal Circuit’s approach.

The test “adds a layer of Federal Circuit jargon that lawyers can then bandy back and forth,” he said, adding, “It seems to me that it’s worse than meaningless because it complicates the inquiry rather than focusing on the statute.”

When Mr. Goldstein noted that “every single major patent bar association in the country has filed on our side,” the chief justice interjected: “Well, which way does that cut? That just indicates that this is profitable for the patent bar.” And when Mr. Goldstein referred to experts who had testified that the Teleflex patent was not obvious, the chief justice asked: “Who do you get to be an expert to tell you something’s not obvious? I mean, the least insightful person you can find?”

Chief Justice Roberts made the comments with a smile, and the courtroom audience responded with laughter. Mr. Goldstein, an experienced Supreme Court advocate, was unfazed at finding himself the straight man in a courtroom comedy. He kept returning to his theme, which was that the Federal Circuit’s test, properly understood, served the function of focusing the inquiry.

“Invention isn’t at the end when you put the two things together,” Mr. Goldstein said. “Invention is finding the problem, deciding what pieces of the prior art to use, and deciding how to put them together.” He warned that there would be “genuine, dramatic instability” if the court disavowed the approach the Federal Circuit has used nearly since its creation in 1982.

Congress created the centralized court for the purpose of reducing instability in the patent system. Underlying the legal arguments was the deeper question of how patent law has fared in the court’s hands — whether, as Justice Stephen G. Breyer put it, “they’ve leaned too far in the direction of never seeing a patent they didn’t like.” There was, Justice Breyer said, “a huge argument going on.” With that observation, Mr. Goldstein readily agreed.