Promote the Progress

We’re working on a special feature for the next issue of The FedCirc.us Reader. We’re talking to patent attorneys from all walks of life (solos, big firms, small firms, in-house, pharma, software, yada yada yada…), asking them a simple question:

“KSR v. Teleflex – What are you telling your clients?”

The conversations we’ve had have been nothing short of fascinating. They’ve left us wanting more…If you’d like to give us your input, send me an e-mail at jmb@rtipllc.com. Fell free to use the comments, too.

I’ve done a lot of thinking about the potential policy implications of the Supreme Court’s recent decision in KSR v. Teleflex. Needless to say, I think the decision puts us at a pivot point (pun intended) in the continuing development of our patent law.

Here’s my list of the top ten policy implications of the case, presented in no particular order. I’ll address each of these topics over the coming weeks here on Promote the Progress. The alternate title listed for each topic should give you an idea of where I’m going…

1. Patent protection is no longer available for incremental – or ordinary – inventions (or “Death – and the potential for rebirth – in Detroit”)

2. Legislation and regulations directed at patent reform should immediately be placed on hold (or “now’s not the time for silly games”)

3. The Patent Office responds (or “383 U.S. 1: Learn it, know it, live it“)

4. Patent lawyers respond (or “You’ve got to know when to hold ‘em, know when to fold ‘em, know when to walk away and know when to run“)

5. In-house counsel and business folks reformulate the file/don’t file calculus (or “Did you do something extraordinary today?”)

6. Premiums paid for key – read ‘extraordinary’ – inventive personnel will increase (or “did you hear? Company X is hiring…”)

7. Look for industry specific caselaw pronouncements of technologies that constitute mere ‘ordinary innovation’ (or “Silly rabbit, these tricks are for kids“)

8. Patent maintenance fees increase dramatically as grant and maintenance rates drop just as dramatically (or “Hey buddy, can you spare a couple grand?”)

9. The backlog disappears (or “Hey…wait just a minute here”)

10. The Federal Circuit gets a chance to restablish itself as the court that brings uniformity to our patent laws (or “Let’s get going“)

Yesterday, I had the opportunity to participate on a panel discussion about KSR v. Teleflex on the Lawyer 2 Lawyer podcast. Bob Ambrogi and J. Craig Williams – two of the great pioneers in law blogging and podcasting – hosted a discussion between Matthew Kreeger of Morrison & Foerster, Professor Joshua Sarnoff from American University, and myself.

We had a great discussion on all things KSR, touching on everything from nuances of the opinion to its practical effects. We even had a mention of Sarbanes-Oxley. Ouch! As always, Bob and Craig’s team did a wonderful production job – you can barely tell I was sitting in a rental car in the Hertz lot at Denver International Airport while taping the show!

It’s a quick listen – about half an hour. I definitely recommend it as you look for materials to help you digest the KSR decision.

Listen to the podcast here.

My review of the KSR v. Teleflex opinion is now available on FedCirc.us. I’ve reproduced the summary below.

In KSR v. Teleflex, a unanimous Supreme Court reminded the Court of Appeals for the Federal Circuit that Graham v. John Deere controls the obviousness inquiry and warned that a rigid application of the teaching / suggestion / motivation test as a litmus test for obviousness is inconsistent with the Graham framework. Stopping short of rejecting the TSM test outright, the Supreme Court slapped the test into submission, leaving it gutless and wanting for a purpose. Simply put, the TSM shortcut for an obviousness analysis is no longer available. The Court’s decision immediately focuses the obviousness spotlight back onto the framework that has controlled the issue for more than forty years, forcing everyone who has grown comfortable with the TSM litmus test shortcut – including the Federal Circuit, the Patent and Trademark Office, and the patent bar – to return to full and proper Graham analyses when assessing the obviousness of patent claims. Importantly, the Court’s opinion touches on several other issues, including the roles of ‘hindsight bias’ and common sense in an obviousness inquiry, a question about the rationale for affording a presumption of validity to the patent-in-suit – which avoided a Graham analysis during prosecution, and a rejection of the rigid rule that ‘obvious to try’ is per se insufficient to show obviousness. KSR v. Teleflex is, without doubt, a case of enormous importance that will likely be viewed as a pivot point in United States patent law in years to come.

I’m finishing my review of the KSR v. Teleflex decision and will post it on FedCirc.us later today. I’m not leaving Promote the Progress out, though. Soon I’ll start a multi-part series of posts on the policy impacts of the decision. Stay tuned.