August 1, 2007
How does a defendant successfully invalidate the patent it is accused of infringing? The Supreme Court weighs in with a landmark decision overturning the appellate court's long used, but overly rigid standard.
Almost two hundred years ago, Thomas Jefferson warned of the dangers of a patent system that would enforce patents on the most obvious of ideas. Jefferson observed that "[a] man has a right to use a saw, an axe, a plane, separately; may he not combine their uses on the same piece of wood? He has a right to use his knife to cut his meat, a fork to hold it; may a patentee take from him the right to combine their use on the same subject?" Jefferson, an inventor himself, feared a system that, "instead of enlarging our conveniences, as was intended, would most fearfully abridge them, and crowd us by monopolies out of the use of the things we have." Jefferson's concerns have not faded with time, and, indeed, took center stage in the Supreme Court's recent decision in KSR International Co. v. Teleflex Inc., which many have called the most important patent decision in decades.
In KSR, the Court addressed how a defendant that is accused of patent infringement can invalidate the patent on the ground of "obviousness." Under 35 U.S.C. 103, inventors cannot obtain a patent if "the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains." A defendant charged with infringement can successfully invalidate a patent by proving by clear and convincing evidence that the invention was obvious and should not have been patented at all.
What standard do courts apply in deciding whether a patent is obvious? That was the issue in KSR. The U.S. Court of Appeals for the Federal Circuit, which has jurisdiction over all patent infringement appeals, required patent infringement defendants to prove obviousness by demonstrating that the prior art - that is, prior patents, publications and the general knowledge to those in the relevant field - expressed some "teaching, suggestion or motivation" to combine the previously known elements into the invention. Strict application of the Federal Circuit's rule provided more certainty to the obviousness analysis and was intended to guard against the danger that hindsight bias would cloud the determination of whether an invention is truly obvious.
Many believed, however, that the Federal Circuit's rule led the patent office to issue too many weak patents that were virtually impossible for a defendant to invalidate in court. At oral argument, Justice Scalia explained that the Federal Circuit's test, which he referred to as "gobbledygook," "produce[d] more patents . . . . [T]he more you narrow the obviousness standard to these three imponderable nouns, the more likely it is that the patent will be granted." Following on this comment, Justice Breyer highlighted the argument that the Federal Circuit had "leaned too far in the direction of never seeing a patent [it] didn't like," which could have "unfortunate implications for the economy." Clearly, Jefferson's concerns were alive and well.
The Supreme Court explained that the Federal Circuit's test, when rigidly applied, contradicted Supreme Court precedent and ran the risk of "[g]ranting patent protection to advances that would occur in the ordinary course without real innovation." Although the "teaching, suggestion, and motivation" test is a "helpful insight" to guide the obviousness inquiry, courts should not apply it rigidly, refusing to invalidate patents that do not meet its requirements. Therefore, the good news for patent infringement defendants attempting to invalidate the patents they are accused of infringing is that they are no longer required to find in the prior art an explicit teaching, suggestion or motivation toward the invention.
What, then, is the standard for proving that an invention is obvious? The Supreme Court did not lay out a clear rule, but held that lower courts should use an "expansive and flexible approach." Courts should be aware of the "distortion caused by hindsight bias," but should not be precluded from using "common sense" to decide whether an invention is obvious. For example, if the inventor has merely combined "familiar elements according to known methods" in a manner that does no more than yield "predictable results," the invention is likely obvious. Therefore, courts must ask "whether the improvement is more than the predictable use of prior art elements according to their established functions." Likewise, the patentee's particular motivation and purpose for making the invention do not control, because what ultimately matters is the "objective reach of the [patent] claim. If the claim extends to what is obvious, it is invalid under 103."
In the end, KSR frees defendants from the constraints of a rigid rule that many believed made the already uphill battle of invalidating a patent even more difficult to win. What remains to be seen, however, is how courts will use their "common sense" to decide questions of obviousness, and whether KSR actually eases the defendant's burden or just makes it more complicated and uncertain.
Tom Vanderbloemen practices at Gallivan, White, & Boyd, P.A., in Greenville, South Carolina. He is a member of the Intellectual Property substantive law group of DRI's Commercial Litigation Section, and, later this year, will serve as a panel member in a DRI online seminar titled "First Response -- What to Do When Your Client Gets Hit with an Intellectual Property Claim." His e-mail address is tvanderbloemen@gwblawfirm.com.
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