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When Kenneth Bass III clerked at the Supreme Court in 1969, his justice, the late Hugo Black, told him confidentially what he thought of patents. “He told me that in his lifetime, he had seen only one real invention � the airplane � and he wasn’t even certain about that one,” says Bass. “He just didn’t like patents.” Bass has to hope the current justices don’t share that view this week, when the Court takes up what he thinks could be the most important patent decision in 40 years. Now a partner in the D.C. firm Sterne, Kessler, Goldstein & Fox, Bass is part of the legal team that will be defending a disputed patent in the case of KSR International v. Teleflex, which will be heard Nov. 28. And Black would probably not like the side Bass is on. Bass represents Pennsylvania auto-parts manufacturer Teleflex, the owner of a patent on an adjustable automobile gas pedal. Teleflex argues in favor of a controversial standard, used by the U.S. Court of Appeals for the Federal Circuit to varying degrees for decades, that enabled Teleflex to get and keep the patent. By requiring patent challengers to produce hard evidence, the standard makes it harder to topple a patent based on the assertion that the new product was an obvious extension of prior ideas. Critics say the standard protects even the most thinly documented patents, opening the floodgates to junk patents for minor innovations and dubious inventions. KSR lawyer James Dabney, a partner in New York’s Fried, Frank, Harris, Shriver & Jacobson, cites statistics indicating that the number of patents upheld after litigation nearly doubled, increasing from 35 percent to 67 percent, after the Federal Circuit and its standard were created. Too many easily won patents, critics say, slow creativity and the exchange of ideas, putting “glue, not grease, into the gears of innovation,” in the words of a brief by the Progress & Freedom Foundation. But if Teleflex loses and the Supreme Court devises a less-patent-protecting standard, says Bass’ co-counsel Thomas Goldstein of Akin Gump Strauss Hauer & Feld, it will open a very different floodgate. Because “many millions” of patents were granted under the disputed standard and patents can be challenged at any time, Goldstein says, “If the Supreme Court does decide to make a substantial change, it will call into question innumerable patents.” [Goldstein is a contributor to Legal Times.] That nightmare scenario might ordinarily make the outcome easy to predict. The Supreme Court can’t possibly want to throw open millions of patents to costly and complex litigation before juries, right? Tabula rasa Maybe, maybe not. In part because of the Court’s historic love-hate relationship with patents, as evidenced by Hugo Black’s remark, the outcome is hard to predict. Some patent experts think the Court is so unhappy with the proliferation of junk patents � and with the Federal Circuit for adopting the standard that allowed them to multiply � that it is willing to blow up the system to fix it. Others think the justices will leave well enough alone, perhaps only fine-tuning the Federal Circuit’s standard. What makes speculating on the outcome of the case doubly difficult is that labels are hard to pin on the justices when patents are involved. “The personality aspect is an unknown. Unlike with constitutional cases, I don’t really have a clue of where the justices will come out,” says Bass. “There are no schools of jurisprudential thought among the justices on this, no perception of who is pro- or anti-patent.” Perhaps because of the uncertain outcome, patent attorneys have lined up by the dozens to file amicus briefs. But because business giants can be found on both sides of the issue, some firms were conflicted out, say lawyers involved in the case. Last month, in a rare move, the Court allowed Michigan lawyer Harold Milton Jr. of Dickinson Wright to withdraw a brief he had filed with the court on behalf of Teleflex, after realizing his firm had a conflict. In another sign of the legal community’s ambivalence about the case, Stanford Law School professor and leading patent scholar Mark Lemley, in effect, switched sides. At first he joined petitioner KSR in urging the Court to review the Federal Circuit’s standard. But after seeing signs of flexibility in some recent Federal Circuit rulings, Lemley changed his mind and joined a brief siding with Teleflex. He now defends the standard as “the best we’ve got right now.” That same sentiment, plus a desire for stability in the field, contributed to a lineup in the case that the Teleflex team points to with pride. All of the bar groups that filed briefs � including the American Bar Association, the American Intellectual Property Law Association, and the Federal Circuit Bar Association � sided with Teleflex in support of the existing standard. On the other side, KSR’s Dabney sniffs that “you should examine with care the professional interests” of the leaders of the bar groups, adding that “the briefs don’t reflect the views of all the members.” In an acidic footnote in one of his briefs to the Court, Dabney also expresses wonderment about the bar’s interest in stability “in view of the enormous fees that litigation of invalid patent claims can generate.” Burdens of proof The briefs are full of ominous predictions about the impact of the case on innovation and the overwhelmed patent system. Solicitor General Paul Clement, joining KSR in the case, says the Federal Circuit standard “imposes significant burdens” on the patent system by forcing examiners to hunt for evidence of obviousness instead of allowing them to quickly dismiss plainly weak patent applications. But part of the background music in the case is the Court’s pendulum swings throughout history on the merits and value of patents. For most of the 19th century, says Joshua Sarnoff, head of the intellectual property law clinic at American University’s Washington College of Law, “patents were a very big deal” for the Supreme Court, with the justices playing their part to foster economic expansion. In a law review article, George Washington University Law School professor John Duffy, part of KSR’s legal team, noted that in 1888 the Court heard 12 days of argument, then produced an opinion upholding Alexander Graham Bell’s patents on the telephone that filled an entire volume of the U.S. Reports. In the 20th century, patent litigation went in and out of favor with the Court, in part because of the highly specialized nature of the law, and also because of the occasional anti-monopolist impulses of justices such as Black. In the 1979 book The Brethren, an inside-the-Court expos� written by Bob Woodward and Scott Armstrong, the Court’s disdain for patent cases was documented. According to the book, a 1975 patent case named Sakraida v. Ag Pro was labeled the “cow shit case” among justices and clerks, only partly because it involved the patentability of a system used to clean the floors of dairy barns. Chief Justice Warren Burger assigned the case to his liberal nemesis, Justice William Brennan Jr., instead of John Paul Stevens, then the Court’s junior justice. Brennan was insulted, according to the book, and he wrote the decision himself to spare his law clerks from the humiliation of getting involved. The ruling, which struck down the patent because of obviousness, is cited in numerous briefs in the case now before the justices. The Court may have thought that it could wash its hands (so to speak) of patent cases entirely when Congress created the Federal Circuit in 1982 to handle appeals in patent cases and a number of other specific areas of law. In fact, until recently, it was rare for the Court to grant review in a patent case, a possible sign that it felt the circuit was handling the jurisprudence well. And when its rulings were reviewed, they were often affirmed. But in the past four years, the Supreme Court has granted review in nine Federal Circuit cases, including two this term, and none have been affirmed so far. Critics have hoped for years that the obviousness standard � a threshold issue for every patent � would get a fresh look from the high court. The case in which the Court finally agreed to review it was an unpublished opinion issued in January 2005. At issue is a Teleflex patent issued in 2000 for an adjustable gas pedal for cars, designed to accommodate what KSR’s Dabney describes as “the five percent female” � petite-sized women who need to reach the pedal without getting too close to the steering wheel’s airbag. Teleflex sued competitor KSR in the Eastern District of Michigan for patent infringement. KSR countered by challenging the validity of the patent as a too-obvious combination of existing elements. The district court agreed that at least one part of the patent was invalid because it was obvious. But the Federal Circuit reversed, finding that KSR had not shown enough evidence that because of prior “teaching, suggestion or motivation,” the patented product was an obvious development that made it undeserving of a patent. Tony Mauro can be contacted at [email protected] IP Law & Business, an ALM publication, contributed to this report.

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