Patently-O Bits and Bytes No. 46: Supreme Court Edition

  • In re Nuijten: The applicant has filed a petition for certiorari to overturn the Federal Circuit’s decision that a man made signal is not patentable.  Professor Duffy filed a ‘law professor’ amicus supporting the position which I signed. We argue that the CAFCs Nuijten decision improperly creates a new subject matter exclusion of transitory inventions that cannot be perceived without special equipment.  The AIPLA also filed a brief asking the Supreme Court to hear the case. [Law Professor Brief][AiplaNuijten (119 KB)]. Judge Linn’s dissent in the Nuijten decision may well serve as an additional amicus.
  • Biomedical Patent Management v. California: This case challenges California’s claims to 11th Amendment Soveriegnty based in part on the state’s increased involvement in the business of patenting and commercialization. The Supreme Court is awaiting views from the US Solicitor General on whether the US recommends grant of certiorari.   
  • Translogic v. Dudas: In this case, Translogic asks the Supreme Court to invalidate a BPAI opinion based on the unconstitutional appointment of BPAI judges. In a recent study, I showed that 83% of recent BPAI decisions included at least one judge appointed by the PTO Director rather than the constitutional required “head of department.”  Translogic has several procedural hurdles.
  • Calmar v. Arminak: The design patent holder asked the Supreme Court to reverse the Federal Circuit’s application of the “ordinary observer” test that improperly excludes the most natural ordinary observer – a retail customer. On June 9, the Supreme Court Denied certiorari.

BPAI Administrative Patent Judges

There continues to be interest in the BPAI appointments problem identified by Professor John Duffy. The solution going forward is quite simple — change the law so that BPAI administrative patent judges will be appointed by the Secretary of Commerce then re-appoint the current judges.  No one is arguing that the BPAI judges are incompetent or lack qualifications for their position — only that they have been appointed in a way that runs contrary to the Constitution.  This issue may not come to a head until demanded by a court of law. The Translogic petition for certiorari is one avenue, although many more will follow until a clear resolution is reached. 

Supreme Court Decides Quanta v. LG Electronics, __ U.S. __ (2008),

Quanta v. LG Electronics, __ U.S. __ (2008)

California Should Not be Immune from Charges of Patent Infringement (But it is Immune)

PatentLawPic160BPMC v. California Department of Health (on petition for certiorari). [Read the Petition]

Supreme Court to Decide Patent Exhaustion Case

Quanta v. LG Electronics (Supreme Court 2007)

KSR and the Line Between Fact and Law

By Professor Chris Cotropia

Well, we have gotten early indications from the major patent players as to how the substantive part of KSR will play out.  TSM still has a place in the post-KSR world, at least according to Chief Judge Michel of the Federal Circuit and Deputy Commissioner Focarino of the USPTO.  These are preliminary statements.  We will not know what the Federal Circuit or USPTO really think until the first precedential opinion or interim guidelines issue.  But these early comments make one wonder if KSR changes anything, particularly those like myself who witnessed the Federal Circuit's acceptance of, and reliance on, implicit TSM well before In re Kahn, DyStar, and Alza.

While the substantive impact may turn out to be minimal, KSR could have a significant procedural effect.  The Court appears to have shifted the line between factual and legal parts of the nonobviousness analysis, moving what was (is?) the TSM test from being a question of fact to a question of law. 

The Supreme Court in Graham established that nonobviousness was ultimately a question of law, but there were recognized underlying factual issues—content of the prior art, scope of the claims, and the level of the PHOSITA.  When the CCPA, and then the Federal Circuit, started employing the TSM test, the test became another underlying factual component of the inquiry.  As a result, there was not much left at the question of law level, and the Federal Circuit affirmed most appeals from rejections by the USPTO and or trials before district courts on the nonobviousness issue.

The Court in KSR introduces a procedural change, folding the TSM-like inquiry into the question of law level of the analysis.  This move is most clearly witnessed in Part IV of the opinion, where Court rejects the existence of a dispute over an issue of material fact.  Slip op. at 23.  The Court goes out of its way to note that "[t]he ultimate judgment of obviousness is a legal determination," rejects the ability of a "conclusory affidavit[s] addressing the question of nonobviousness" to create a fact issue, and shows concern only to whether the first three Graham factors are "in material dispute."  Id.  In contrast, the final step, determining whether a PHOSITA would modify the prior art, is identified as a "legal question."  Slip op. at 21.    The earlier, general discussion of the substantive standard also supports this interpretation.  The opinion focuses on what "a court" should analyze when determining whether there is "an apparent reason to combine."  Slip op. at 14.

The implications of this procedural change are many.  Making the TSM-like analysis a question of law facilitates more summary judgments on the issue of nonobviousness (although not as much as one would think, as I determined here).  It also gives the Federal Circuit more freedom to reverse both USPTO and district court judgments on nonobviousness.  This may lead us down a similar road as Markman has, giving the Federal Circuit so much flexibility that it injects even greater uncertainty into an area that is inherently uncertain, particularly after KSR.  We might even end up with KSR hearings.

Admittedly, the Court does not explicitly say it is making this change.  And, as the Federal Circuit has done in the past, TSM-like discussions can be framed as part of one of the first three Graham factors that have always been factual issues.  However, the main focus of the opinion is on the Federal Circuit's "application" of § 103, and the language and application in KSR strongly suggest a change in the law/fact line in nonobviousness analysis (or maybe this is all just a "common sense" reading).

Chris Cotropia is an Associate Professor of Law at the University of Richmond School of Law and is part of the School's Intellectual Property Institute.  Professor Cotropia was counsel of record and a co-author on the Brief of Business and Law Professors as Amici Curiae in Support of the Respondents in KSR.