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BAY AREA PATENT CASE NOT ROCKED BY ‘OBVIOUSNESS’ OPINION The new, more relaxed standardfor a patent’s “obviousness” and validity set down by the U.S. Supreme Court’s recent KSR v. Teleflex opinion is being put to the test in federal courtrooms across the country. In San Francisco, what may be one of the first trial tests of the standard came up in a late-June case before U.S. District Judge Maxine Chesney. Milpitas-based Celerity Inc. had accused chief rival Ultra Clean Technology, of Menlo Park, of infringing on two patents related to the manufacture of semiconductors. Ultra Clean, represented by Perkins Coie partner Paul Andre, had argued that the patents were invalid under the new KSRstandard. On June 25, a jury found both patents to be valid, and found Ultra Clean had infringed on one of them. The jury awarded $13,900 in damages to Celerity, which was represented by Thelen Reid Brown Raysman & Steiner partner Keith Slenkovich. Ultra Clean had not yet sold any products utilizing the infringing patent, Slenkovich said. A key factor in how the new standard was handled in the trial was the jury instruction on obviousness, the attorneys said. In Slenkovich’s view, Chesney ably applied the KSRopinion � which got rid of an earlier, stricter obviousness test. “Judge Chesney did a good job,” he said. He added that the application of the new standard was probably difficult because many in the legal community consider the opinion in KSR v. Teleflex, 07 C.D.O.S. 4654, to be on the vague side. Andre, on the other hand, said he thought Chesney could have taken the new standard further. “The judge in her jury instructions did not deviate very far from the previous standards in model jury instructions on obviousness,” he said. “We were asking the court to apply more along the lines of the KSRcase. The court rejected those requests.” The jury’s findings on patent validity serve as proof that the new obviousness standards don’t spell doom for patent holders, Slenkovich said. He’s now convinced that the KSRstandard is “not as big a deal” as many patent holders feared. “You still have some arrows in your quiver if you’re a patent holder,” he said.

Jessie Seyfer

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