Search Results for: "sas institute"
ITC Claim Construction Vacated — Court Unnecessariliy Limited Claim Scope
What Does it Take to Become a Patent Attorney?
The Practicing Law Institute is hosting a free audio webcast IP Career Series directed to young lawyers, law students, and people thinking about law school. Their next audio briefing is titled “So You Want to Be a Patent Lawyer…," and will be held on April 18th from 1:00-2:00 p.m. EST. John White (who helped me learn patent law) and Katharine Patterson will present topics that include:
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What does it take to become a patent attorney?
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What does it mean to say you’re a patent attorney?
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What is life like as a patent attorney?
In answering the general questions, White & Patterson expect to delve into how to decide between a prosecution or a litigation career and other sub-topics such as: The distinction between patent agents and patent attorneys; Hot undergraduate technical degrees; Whether and when a PhD is important; Geographical areas; and how to find a firm that wants to hire you.
Registration info:
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Register by Phone: (800) 260-4754. (Priority Code: CRA5-8BLG2).
Supreme Court Briefs: Merck KGaA v. Integra
Federal Circuit Gives PTO Free Rein To Demand Information Beyond That Defined By Section 1.56 As Material to Patentability
Trademarks granted on Mies van der Rohe’s 1929 furniture designs.
Huang v. CIT (Lab Notebook Must be Witnessed)
Director, Codes and Standards – Trade Association – Remote
The National Propane Gas Association (NPGA) represents every segment of the propane industry. As the Director of Codes and Standards, reporting to the Vice President & Chief Technical Officer, you will have a national and global impact, using your knowledge, technical, and advocacy experience to support us in addressing the complex challenges facing the propane industry today. This is a highly visible and respected role where you will influence future standards, interface with all levels of NPGA staff and board, and connect with organizations across the country.
This role is ideally suited for either a codes & standards professional or for a professional engineer or patent prosecution attorney looking for a career transition.
The Work You’ll Do:
Working closely with the Vice President and Chief Technical Officer and Director of Research and Technology, you will serve as an influential subject matter expert, advocating on behalf of NPGA membership for the development of fair and progressive codes and standards across the energy sector. In representing NPGA, you will:
- Advocate before numerous codes- and standards-setting bodies in favor of conventional and renewable propane to ensure energy choice.
- Work with NPGA committee members to develop new and revised codes and standards proposals to further the usage and safety of propane and related equipment.
- Develop coalitions with like-minded industry associations to work toward common goals and use your deep understanding of the industry to advise NPGA members on nationally recognized codes and standards, including those from the National Fire Protection Association, the International Code Council, and others.
- Support the Vice President and Chief Technical Officer with managing committee activities, including preparing and maintaining records, developing technical and advocacy content, and working with members to prepare high-quality documents.
- Liaise with our sister organization, the Propane Education & Research Council (PERC), and collaborate on a range of projects, including serving as a resource on the codes and standards related to research and development for end-use, transportation, storage, and handling equipment.
Work Environment, Salary, and Benefits:
You’ll enjoy working primarily from your home office with frequent domestic travel (between 10-15 trips annually) to represent the propane industry in developing nationally recognized codes and standards, meet partners to build coalitions, attend board meetings, visit state and regional member associations, and represent NPGA at industry events.
The budgeted salary range for this position is $115K - $130k with an annual discretionary merit-based bonus and outstanding benefits package including 15 days of PTO + 14 paid holidays, medical/dental/vision plans, a generous retirement plan, a mobile phone subsidy, and more.
You will like who you work with. Your colleagues are highly respected industry experts, and our members are fantastic. Many of our members are family-owned, family-friendly companies that are welcoming and appreciative of our work. Our experienced team will support you as you come up to speed.
Responsibilities:
- Advocate for NPGA policy while developing nationally recognized codes and standards, including but not limited to:
- NFPA 58 LP-Gas Code
- NFPA 54/ANSI Z223.1 National Fuel Gas Code
- International Code Council Model Codes
- Z21/83, CSA, ASHRAE, ASTM, and Underwriters Laboratories codes and standards
- Work with the 36 regional and state associations that are affiliated with NPGA to advocate for industry-advantageous codes and standards.
- Work with NPGA’s other pillars of advocacy (federal legislative, federal regulatory, and state & municipal advocacy) as well as NPGA’s sister organization (PERC) on cross-functional matters where codes and standards expertise is warranted.
- Work with related organizations on common interests, including but not limited to the American Gas Association; the Hearth, Patio & Barbecue Association; the American Public Gas Association; the Association of Home Appliance Manufacturers; and the Air-Conditioning, Heating, and Refrigeration Institute.
- Review and provide draft material in response to proposals relating to vehicle engines, appliance energy efficiencies, and other technical issues related to propane transportation, storage, and handling.
- Represent NPGA and engage members in meetings with the Technology, Standards, and Safety Committee.
- Collaborate with the Communications Team to develop informative reports, documents, and other membership materials.
- Periodically provide seminars to NPGA members and affiliated state propane gas associations to update them on new editions and changes to codes and standards.
Qualifications:
- Bachelor’s degree in engineering (chemical, environmental, or mechanical is ideal) or a related scientific field is required.
- MS, PE license, or JD with admittance to the patent bar is preferred.
- Experience working in a regulatory environment or a codes and standards development organization or a related field is advantageous but not required.
- Familiarity with environmental standards and and safety compliance within the energy industry is advantageous but not required.
- Very sharp eye for reviewing and drafting complex written materials.
- Keen ability to advocate for a position in writing and orally.
- Ability to travel domestically 8-12 times per year.
About Us:
Next to solar and wind, propane—and increasingly, renewable propane—is one of the cleanest fuels approved under the Clean Air Act. The National Propane Gas Association (NPGA) is the national trade association representing the US propane industry. We represent members from 2,500 companies in all 50 states, 36 affiliated state or regional associations, and 19 foreign countries. Our work pushes the propane industry forward by advancing safety and sound public policy.
How to Apply:
Email your resume to Lilly Khan at resumes@staffingadvisors.com with “NPGA – Director, Codes and Standards #2023-2766 PA” as the subject of the email. Staffing Advisors is committed to reducing bias in every aspect of the hiring process. We have long recommended a competency-driven approach to hiring. All qualified applicants will receive consideration for employment without regard to race, color, religion, gender, gender identity or expression, sexual orientation, national origin, genetics, disability, age, veteran status, or any other basis protected by law.
Include with your submission a resume in Word or PDF format.
Additional Info
Employer Type: Other
Job Location: Remote
Patent Agent/ Technical Specialist – Small Corporation – Maryland
Vaccitech plc is a fast-growing biotech company. At only five years old we already have a development portfolio of six products, a partnered product that is in commercial production that has seen more than 3 billion doses administered worldwide and an IPO behind us. We are a publicly-listed clinical stage biopharmaceutical company that spun out of the University of Oxford’s Jenner Institute, one of the most prestigious vaccine research centres in the world. We discover and develop immunotherapeutic products and vaccines for the treatment and prevention of infectious diseases and cancer. Our achievements include co-inventing and jointly developing our COVID-19 vaccine candidate VTP-900, now Vaxzevria, which we assigned to Oxford University Innovation to facilitate the licensing of those rights to AstraZeneca. We have clinical studies to explore treatments for patients with HBV and HPV infections and are developing rapid and scalable manufacturing processes for our platforms.
In December 2021 Vaccitech acquired Avidea Technologies with exciting product candidates for oncology and autoimmunity based on the innovative SNAPvax platform, which has demonstrated unprecedented control over T cell induction. This gives us US operational presence in Maryland, complements Vaccitech’s established capabilities and reinforces our position as a fast-growing global leader in immunotherapies and vaccines. From Q3 2022 Vaccitech's US headquarters will be moving to a new facility in Montgomery County. We conduct research globally and have ambitious plans in the UK and US, where we will continue to grow our teams over the coming months and years.
The Role:
The successful candidate will be the interface between internal technical, legal/ IP teams and outside counsel, supporting patent strategy in pursuit of business development and corporate goals. Your key responsibilities will include independently working with R&D staff to understand technical approaches and data output; compiling and curating reports of R&D output to assist invention identification; assisting in-house and external counsel in drafting patent applications and prosecuting a global patent portfolio; managing patent correspondence and document generation in support of global patent prosecution; contributing as part of multi-disciplinary scientific, legal and business development teams to deliver on business-critical projects; working closely with internal and external counsel to help coordinate and manage intellectual property strategy; searching scientific and patent literature and patent document databases to monitor competitor landscape; and presenting updates and guidance to all levels of the company including the senior leadership team and R&D teams.
Experience and qualifications:
Due to the nature of Vaccitech North America’s manufacturing platform and product candidates, the successful applicant candidate must be an expert in chemistry, will holding a graduate degree (PhD preferred) in chemistry or chemical engineering and possessing a deep understanding of the subject. You will also have a minimum of two years’ experience in intellectual property related work (USPTO admission to practice preferred) and a demonstrable experience in patent and claim drafting, in patent prosecution and in technology assessment or invention identification. As an accomplished writer you will have a proven ability to communicate technical information in a clear and concise manner. The successful candidate will have a familiarity with patent database searching methodologies, ideally with competitor landscape analysis. Experience with in-licensing and/ or out-licensing would be a distinct advantage. All applicants must be a US citizen or green card holder as we cannot offer sponsorship.
What we can offer you:
Vaccitech is a great place to work. We encourage an entirely flat structure with an open door policy to the senior leadership team. Our employees agree the culture and working environment is one of the best things about our business. This role would suit an experienced Patent Agent looking for a broad and varied role in a rapidly accelerating biotech. As part of a fast-growing team they will play a significant part in shaping the future in a global biopharmaceutical company that offers significant opportunities for personal and professional development. We offer employer funded health, dental and vision insurance; a 401k retirement plan; career development opportunities and paid time off (PTO). Salary will be commensurate with experience.
Apply online at:
https://vaccitech.bamboohr.com/jobs/view.php?id=34&source=aWQ9MjA%3D
All applicants are required to submit both a resume and a cover letter.
Additional Info
Employer Type: Small Corporation
Job Location: Maryland
Patent Counsel – Small Corporation – Washington, D.C.
Unified Patents is again growing its legal department, and seeks experienced, registered, patent attorneys. Applicants must have at least 3 years of law firm or other relevant experience at the Patent Trial and Appeal Board (PTAB) and post-grant petition (IPR, PGR, and CBM), reexamination, and other administrative drafting and litigation experience;
Applicants should have a degree in Electrical Engineering (EE) or Computer Science (SC), as well as experience with video codecs, coding, cryptography, compression, signals, wireless communications, or other algorithmic subject matter. Patent examination experience is a plus; clerking experience is a plus; familiarity with ongoing cases post-SAS Institutes is a plus. Must be willing to work within a team, work well independently, and enjoy writing and editing. Journal and filing experience a plus. Strong preference for candidates located in the Washington, DC area.
DUTIES
- Managing patent office proceedings internally
- Drafting, filing, and litigating patent office proceedings, e.g., inter partes reviews
- Handling calls with decision makers
- Preparing for, conducting depositions
- Presenting at oral hearings
- Drafting motions and briefs
- Supporting senior attorneys with management of ongoing matters
- Support docketing, e-filing, deposit account, budgeting, and other IP functions
- Editing work product of colleagues, outside counsel
- Amicus curiae drafting and support; comment drafting and support
- Contract, licensing, and other legal support services
- Legal writing, support, and other various legal duties
REQUIREMENTS
- 3 years of PTAB (drafting petitions, filing, litigating, deposition) experience
- State and Patent Bar passage
- Ability to work independently and in a team
- Excellent English written and oral communication skills
PREFERRED
- Patent Office examination experience
- Algorithmic, codec, and other code-based subject matter experience
- Appellate and /or Clerking experience
- EE or CS undergraduate degree
- Graduate Technical (MS, MA, or PhD) degree
- Willing to work from DC strongly preferred
BENEFITS
Aggressive, competitive benefits, with generous vacation and paid-for health insurance; freedom to work from home when appropriate; maternity and paternity leave; and financial support for bar and further education.
Contact
To apply, please visit this website: https://unifiedpatents.
Additional Info
Employer Type: Small Corporation
Job Location: Washington, D.C.
Dean – Univ. of New Hampshire School of Law – Durham, N.H.
The University of New Hampshire invites applications and nominations for the position of Dean of the University of New Hampshire School of Law.
The only law school in New Hampshire, the UNH School of Law is a national leader in intellectual property law and practice-ready curricula with a commitment to inclusion, diversity and quality engagement for all. The School is ranked number five in intellectual property law and has been among the top ten IP law schools for 25 consecutive years. Overall, UNH Law jumped 55 positions in the US News rankings in the past three years – an unprecedented rise among law schools. UNH Law was founded as the Franklin Pierce Law Center in 1973 in the state capital of Concord. In 2010, the University of New Hampshire and Franklin Pierce agreed to affiliate and eventually merge, resulting in the UNH School of Law. More information about the School of Law may be found at www.law.unh.edu.
The University of New Hampshire School of Law is an intimate, innovative law school, committed to developing students who enjoy challenging dialogue from the first moments of orientation, embrace practice-based learning, and stand ready to join the ranks of alumni who are global leaders in intellectual property, general practice, public interest and social justice, and commerce and technology.
Throughout its history, UNH Law has been a global leader in innovative legal education. Students study in a close-knit, cooperative environment. The curriculum emphasizes an intensive, practice-based approach involving many opportunities for hands-on learning. With a highly productive and engaged full-time faculty of 28 and a student:faculty ratio of 12:1, the School of Law serves 253 students from 31 states and 11 countries across the globe, offering JD, LLM, and Masters degrees, certificates, dual degrees and joint degrees. The school has the third highest placement rate among New England law schools for graduates in non-school funded, bar-required positions. Approximately 97% of the Class of 2015 enrolls in a live-client clinic or completes a legal residency.
The UNH School of Law celebrates over 5,700 alumni currently practicing in over 80 countries who are providing global leadership in the areas of intellectual property, general practice, public policy, commerce and technology. International graduates from Afghanistan to Zambia comprise almost 15 percent of the alumni population, over half of whom practice in the East Asian countries of South Korea, Taiwan and China. Alumni from the Franklin Pierce Center for Intellectual Property have a distinctive presence in senior leadership positions in IP-centric markets in all major east and west coast population centers.
UNH Law features specialized programs that blend innovative legal scholarship, dynamic teaching and hands-on professional development:
- The Franklin Pierce Center for Intellectual Property Law
- The Warren B. Rudman Center for Justice, Leadership and Public Service
- The Daniel Webster Scholar Program
- The UNH Law Legal Residency Program
- The Sports and Entertainment Law Institute
- The Health Law and Policy Program
- The UNH Law Clinics
UNH is an Equal Opportunity/Equal Access/Affirmative Action institution. The University seeks excellence through diversity among its administrators, faculty, staff, and students. The University prohibits discrimination on the basis of race, color, religion, sex, age, national origin, sexual orientation, gender identity or expression, disability, veteran status, or marital status. Application by members of all underrepresented groups is encouraged.
Contact
Applications, nominations and inquiries may be directed in confidence to Lucy A. Leske or Sheila Murphy, the Witt/Kieffer consultants assisting UNH Law with this search, at UNHLawDean@wittkieffer.com. Electronic submissions are required and should include a letter of interest, current resume, and a list of at least five references with contact information. Application review will begin on September 15, 2016, and will continue until the position is filled.
Additional Info
Employer Type: Education
Job Location: Durham, New Hampshire
Legal Assistant / Paralegal – Small Corporation – Cambridge, Mass.
Moderna Therapeutics 
is seeking a skilled para-professional (assistant or paralegal) for in-house legal support with a focus on intellectual property and transactional matters. This talented individual will be instrumental in supporting internal efforts directed at patent preparation, filing, and prosecution. The position will also involve support of transactional work directed to various contracts and agreements including MTAs, CDAs, JDAs, MSAs, research collaborations, and licensing agreements. The IP assistant/paralegal will also provide general support of the company’s legal department as well as special projects as they may arise within the department.
Responsibilities:
• Effectively collaborates with in-house attorneys and agents and coordinates with outside counsel/staff
• Supports timely patent preparation, filing and prosecution activities
• Support and manage all contract and transactional work at the company
• Responsible for special projects including, but not limited to; due diligence, assignment projects, interference proceedings, post grant review, sequence listings, re-
examinations, and on-line patent database searches
• Assumes additional responsibilities, as assigned
Minimum Qualifications:
• 3 years of legal administrative or para-professional experience in a corporation or law firm
• Proficient with Microsoft Word, Outlook, searching and docketing software
• Effective collaborator interpersonal skills
Preferred Qualifications:
• A BA/BS degree
• Experience in biotech or pharmaceutical industry or at law firm that supports the same
• Familiarity with technical aspects of biological or chemical sciences
• Notary Public certification
Competencies:
• Detail Orientation (strong attention to detail and high quality work standards)
• Highly Organized (ability to prioritize and perform effectively under pressure)
• Results Orientation
• Operates Independently (works independently and meet deadlines with minimum supervision)
• Excellent analytical, organizational and time management skills
• Effective Communication (oral and written)
Contact:
Apply online at: http://modernatx.com/revolution.
Additional Info:
Employer Type: Small Corporation
Job Location: Cambridge, Massachusetts
Why join Moderna Therapeutics:
Moderna Therapeutics is pioneering messenger RNA therapeutics™, an entirely new in vivo drug modality that produces human proteins or antibodies inside patient cells, which are in turn active intracellularly or secreted. This breakthrough platform addresses currently undruggable targets and offers a superior alternative to existing drug modalities for a wide range of disease conditions. Moderna has developed a broad intellectual property estate relating to mRNA therapeutic technologies ranging from novel nucleotide chemistries to specific drug compositions. The company plans to develop and commercialize its innovative mRNA drugs—initially for rare diseases and oncology—while partnering drug candidates in other therapeutic areas in order to rapidly deliver this innovation to patients.
Based in Cambridge, Massachusetts, Moderna is privately held and was founded in 2010 by Flagship VentureLabs in association with leading scientists from Harvard University and Massachusetts Institute of Technology.
Moderna recently signed a collaboration agreement with Astra Zeneca that provided a $240MM upfront payment (plus milestone payments).
Moderna is committed to equal employment opportunity and non-discrimination for all employees and qualified applicants without regard to a person’s race, color, gender, age, religion, national origin, ancestry, disability, veteran status, genetic information, sexual orientation or any characteristic protected under applicable law. Moderna will make reasonable accommodations for qualified individuals with known disabilities, in accordance with applicable law.
Patent Agent / Attorney – Small Corporation – Cambridge, Mass.
Moderna Therapeutics is seeking a skilled para-professional (assistant or paralegal) for in-house legal support with a focus on intellectual property and transactional matters. This talented individual will be instrumental in supporting internal efforts directed at patent preparation, filing, and prosecution. The position will also involve support of transactional work directed to various contracts and agreements including MTAs, CDAs, JDAs, MSAs, research collaborations, and licensing agreements. The IP assistant/paralegal will also provide general support of the company’s legal department as well as special projects as they may arise within the department.
Responsibilities:
• Effectively collaborates with in-house attorneys and agents and coordinates with outside counsel/staff
• Supports timely patent preparation, filing and prosecution activities
• Support and manage all contract and transactional work at the company
• Responsible for special projects including, but not limited to; due diligence, assignment projects, interference proceedings, post grant review, sequence listings, re-examinations, and on-line patent database searches
• Assumes additional responsibilities, as assigned
Minimum Qualifications:
• 3 years of legal administrative or para-professional experience in a corporation or law firm
• Proficient with Microsoft Word, Outlook, searching and docketing software
• Effective collaborator interpersonal skills
Preferred Qualifications:
• A BA/BS degree
• Experience in biotech or pharmaceutical industry or at law firm that supports the same
• Familiarity with technical aspects of biological or chemical sciences
• Notary Public certification
Competencies:
• Detail Orientation (strong attention to detail and high quality work standards)
• Highly Organized (ability to prioritize and perform effectively under pressure)
• Results Orientation
• Operates Independently (works independently and meet deadlines with minimum supervision)
• Excellent analytical, organizational and time management skills
• Effective Communication (oral and written)
Contact:
Apply online at: http://modernatx.com/revolution.
Additional Info:
Employer Type: Small Corporation
Job Location: Cambridge, Massachusetts
Why join Moderna Therapeutics:
Moderna Therapeutics is pioneering messenger RNA therapeutics™, an entirely new in vivo drug modality that produces human proteins or antibodies inside patient cells, which are in turn active intracellularly or secreted. This breakthrough platform addresses currently undruggable targets and offers a superior alternative to existing drug modalities for a wide range of disease conditions. Moderna has developed a broad intellectual property estate relating to mRNA therapeutic technologies ranging from novel nucleotide chemistries to specific drug compositions. The company plans to develop and commercialize its innovative mRNA drugs—initially for rare diseases and oncology—while partnering drug candidates in other therapeutic areas in order to rapidly deliver this innovation to patients.
Based in Cambridge, Massachusetts, Moderna is privately held and was founded in 2010 by Flagship VentureLabs in association with leading scientists from Harvard University and Massachusetts Institute of Technology.
Moderna recently signed a collaboration agreement with Astra Zeneca that provided a $240MM upfront payment (plus milestone payments).
Moderna is committed to equal employment opportunity and non-discrimination for all employees and qualified applicants without regard to a person’s race, color, gender, age, religion, national origin, ancestry, disability, veteran status, genetic information, sexual orientation or any characteristic protected under applicable law. Moderna will make reasonable accommodations for qualified individuals with known disabilities, in accordance with applicable law.
Intellectual Property Specialist – Hong Kong Polytechnic University – Hong Kong
The Hong Kong Polytechnic University (PolyU) seeks an intellectual property specialist to work within its Partnership Development Office. The University is the largest government-funded tertiary institution in Hong Kong, with a total student headcount of about 27,200, of which 13,500 are full-time students, 11,400 are part-time students and 2,300 are mixed-mode students. It offers programmes at Doctorate, Master's, Bachelor's degrees and Higher Diploma levels. The University has 26 academic departments and units grouped under six faculties, as well as 2 independent schools. It has a full-time academic staff strength of around 1,250. The total consolidated expenditure budget of the University is in excess of HK$4 billion per year.
The University's Partnership Development Office is a unit of the Institute for Enterprise at PolyU. It serves as a hub of a network of partners and clients to enable technology transfer and commercialisation. Its mission is to build long-term relationships between internal academic talents and the industrial and business sectors. To tap on the vast capability and resources at PolyU, it serves as the first point of contact for the commercial and industrial sectors. It provides professional services in the areas of Business Development, Management of the University's Intellectual Property, and Marketing Services and Support.
Responsibilities:
Successful candidate required to:
• Advise PolyU’s staff and students on patent applications, strategies and other forms of intellectual property protection
• Conduct patent search, prepare patent applications, professional response to office actions and patent annuity payment, and provide reminding services
• Render patentability and non-infringement opinions
• Provide services on patent litigation and administrative resolution of patent disputes
• Conduct talks/seminars on intellectual property
• Supervise clerical staff.
Requirements:
Applicants should have the following:
• Recognised university degree, preferably in Law and/or Science
• Qualification of being a Registered Patent Attorney by examination
• At least eight years of experience in a related field, including proven experience in the preparation of all forms of intellectual property applications
• Excellent interpersonal and communication skills
• An excellent command of English.
Preference will be given to those with good command of Chinese, including Putonghua.
(Applicants who have responded to the previous advertisement on July 12, 2008 need not re-apply.)
Benefits:
Salary offered will be commensurate with qualifications and experience. Applicants should state their current and expected salary in the application. Remuneration package will be highly competitive.
Contact:
Please submit application form via email to hrstaff@polyu.edu.hk; by fax at (852) 2764 3374; or by mail to Human Resources Office, 13/F, Li Ka Shing Tower, The Hong Kong Polytechnic University, Hung Hom, Kowloon, Hong Kong.
Application forms can be obtained via the above channels or they may be downloaded here. Recruitment will continue until the positions are filled. Details on the University's Personal Information Collection Statement for recruitment can be found here.
Additional Info:
Employer Type: Education Institution
Job Location: Hong Kong
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.