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In surprisingly blunt terms, Supreme Court justices Tuesday made it crystal clear that they are upset with the nation’s patent system, the lawyers who litigate under it, and the appeals court that referees it. During a lively � bordering on raucous � hour of arguments on what makes an invention so obvious that it does not deserve a patent, justice after justice piled on criticism of the U.S. Court of Appeals for the Federal Circuit’s three-part “teaching-suggestion-motivation” test for determining obviousness, an issue that arises in virtually every patent application and appeal. The test has been criticized as too patent-friendly, resulting in a proliferation of junk patents that stifle competition. “Three imponderable nouns,” is how Justice Antonin Scalia dismissed the test, also calling it “gobbledygook” for good measure. Chief Justice John Roberts Jr. called it “Federal Circuit jargon” that is inflexible and “worse than meaningless.” And when Justice Stephen Breyer said he had read the briefs in the case “15 times” and still could not understand the “motivation” prong of the test, Scalia chimed in, “Like Justice Breyer, I don’t understand.” The implied message to the Federal Circuit seemed to be: If two of the brainier justices on the Supreme Court don’t have a clue what you are talking about, a new test might be in order. By the end of the arguments in KSR International v. Teleflex, it seemed obvious that the Federal Circuit’s three-part test for obviousness will be modified, if not scrapped altogether. But what will replace it was less clear. After the argument Tuesday, the Federal Circuit’s chief judge, Paul Michel, defended the test in a telephone interview, asserting, “The judges of our court are quite clear on what it is and how to apply it.” He said the test goes back decades � since before creation of the court in 1982 � and has been applied with flexibility and common sense. “I wonder if some of the descriptions of the test I have seen lately are accurate.” Michel stressed that he did not attend Tuesday’s high court arguments and was not responding to specific comments by any justice. Under the Federal Circuit’s test, anyone challenging a patent must show some evidence that there are prior teachings, suggestions, or motivations or incentives in the field that make the challenged item an obvious development rather than a patentable innovation. Because it requires some kind of evidence, even in fast-moving technologies in which such evidence can be hard to document, the test has been attacked for making it too hard for examiners to deny a patent application and for competitors to topple existing patents. James Dabney, arguing against the test, told the Court the test makes it very difficult to challenge a patent claim, “no matter how small might be the difference between a patent claim and prior art.” Dabney, a partner in New York’s Fried, Frank, Harris, Shriver & Jacobson, represented KSR, a company that challenged Teleflex’s patent for an adjustable gas pedal for cars. The Federal Circuit, using its disputed test, upheld the patent, prompting KSR’s plea to the high court. Dabney’s adversary, Thomas Goldstein, who had the suddenly unenviable task of defending the circuit and its test, made a last-ditch effort that could limit the damage. He warned the justices that if they come up with a completely new test, millions of patents that were reviewed or upheld under the old standard for the past 20 years or more could be challenged in court. “It will create genuine, dramatic instability,” said Goldstein, partner in Akin Gump Strauss Hauer & Feld, who represented Teleflex. [Goldstein is a contributor to Legal Times.] Goldstein’s floodgate argument appeared to give pause to some justices. “Are there going to be 100,000 cases filed tomorrow morning?” asked Justice David Souter. Goldstein also noted that all of the patent bar associations that filed briefs in the case were on his side, endorsing the Federal Circuit’s test as a balanced and workable standard. That brought a sharp rebuke from Roberts. “Well, which way does that cut? That just indicates this is profitable for the patent bar,” he said. At another point, Roberts also ridiculed the concept of hiring expert witnesses to testify that a certain innovation was not obvious from prior art. “Who do you get to be an expert to tell you something’s not obvious?” Roberts asked aloud. “I mean, the least insightful person you can find?” After the argument, Goldstein said that if the Court does only minor tinkering with the standard, litigation might be limited, but if it adds significant new factors to the test, legal challenges to past patents could be “a huge problem.” During one of the hour’s lighter moments, Breyer revealed his own aspirations as an inventor. He said that at his home � he did not specify which one � raccoons have been eating the mechanism on his garage-door opener that detects when a car is coming or going. He said he had the bright idea of putting the mechanism at the top of the door, rather than on the ground, to protect it from critters. “How could I get a patent for that?” Breyer asked. Tony Mauro can be contacted at [email protected]

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