Who Judges the Spark of Invention?

by Dennis Crouch

The light bulb represents the patent system in many ways – both for the invention itself and for the symbolic spark of creativity and determined perseverance that it represents.  Thus, it may be appropriate that a new Supreme Court petition stems from a light-bulb case (white LEDs). Nichia Corporation v. Everlight Electronics Co., Ltd., Supreme Court Docket No. 17-1707 (2018).

Professor Mark Lemley (acting in his role as an advocate) has filed a new petition for writ of certiorari focused on the question of obviousness — asking why the Federal Circuit is effectively treating obviousness as a question of fact:

1. This Court has repeatedly held that whether a patent is invalid as obvious is a question of law, though it may depend on subsidiary factual findings. . . . Should an appellate court review the ultimate legal question of obviousness de novo, as the Seventh and Ninth Circuits have held and as the Federal Circuit held before 2012, or must the appellate court defer to a jury’s conclusion even on the ultimate legal question, as the Federal Circuit has repeatedly held in patent cases since 2012?

2. Alternatively, if this Court were to conclude that obviousness presents a “mixed” question of law and fact, as the Federal Circuit now treats it, should this Court grant certiorari, vacate, and remand this case to determine whether appellate review of that “mixed” question should be de novo or deferential in light of U.S. Bank National Association ex rel. CWCapital Asset Management LLC v. Village at Lakeridge, LLC, 138 S. Ct. 960, 967 (2018), a case decided after the Federal Circuit decision here?

Nichia Corporation v. Everlight Electronics Co., Ltd., Supreme Court Docket No. 17-1707 (2018).

The brief explains that in 2012, the Federal Circuit abandoned its historic treatment of obviousness as a question of law (and de novo review) and began instead “deferring to jury verdicts even on ultimate questions of law.”

Although this particular case is focused at the appellate level, a statement from the Supreme Court could also shift how district courts decide — particularly requiring that district court judges rule on the ultimate question of obviousness (doing so would require a reasoned opinion as well).  The brief explains that this designation as a question of law is not a mere happenstance in this situation – but rather:

[R]eflects the long-standing recognition that patents are public rights and that the public has an interest in the proper determination of their validity. . . Judges, not juries, are expected to set the proper balance between the interests of patentees and the public, and to do so on the record.

I previously wrote about the Federal Circuit’s jumping-off point in the case of Kinetic Conceps v. Smith & Nephew:

Who Decides Obviousness: Judge or Jury?

In this case, Prof. Lemley is representing the patentee Nichia who’s asserted claims were found invalid by a jury. The patent, U.S. Patent No. 5,998,925, covers an improved white-light LED.

12 thoughts on “Who Judges the Spark of Invention?

  1. 5

    The European history of this case is interesting.

    There is a large family of granted European patents, the first of which was opposed, and the remainder of which have led peaceful lives since grant. In the opposed patent, there was no appeal so that the only reasoned decision is that of the opposition division. In essence, an objection of lack of inventive step was dismissed in relation to the claim as amended as being based on impermissible hindsight.

    1. 5.1

      Thanks Paul. I see 13 divisionals filed at the EPO. I see four Opponents, three of them corporate but with Oppo 3 hiding behind an attorney name. Perhaps that was Everlight.

      I’m impressed, that not one of the four filed an appeal.

      The claim was amended (as you point out) during those post-issue opposition proceedings. Perhaps it ended up so narrow that the Opponents, back in early 2007, no longer saw it as a threat. If so, classic use of opposition proceedings at the EPO.

      But how about the follow on claims in the 13 divisionals? It would appear they were no threat either. They certainly aren’t now though, are they, with their filing date of July 29, 1997. BTW, I presume that the subject US patent also expired last year.

  2. 4

    No view of 103 is complete without reference to the writings of Judge Rich.

    1. 4.2

      I could not agree more either. Actually, I would say no reference to patents is complete without a reference to Rich and an explicit disclaimer that Lemley is a shill.

  3. 3

    The hubris is off the charts. Whether something was obvious twenty-two years ago is primarily a factual question. The inventors and the examiner believed it was not obvious else they would not have filed/allowed the patent. The infringer’s expert (predictably) feels it “would have been obvious”. This is not a question of law. It is a question of who to believe about what a person of ordinary skill would have done twenty-two years ago. It is eminently a question for the jury who heard a week or more of evidence, testimony, and cross-examination. It is not a question to be tried de novo by a panel of three judges in Washington, D.C. who spent a half an hour on the case.

    And yes, professor Lemley is cloaking himself as an advocate for the patent owner here to advance a spurious legal theory designed to further destabilize patent rights.

    1. 3.1

      “Whether something was obvious twenty-two years ago is primarily a factual question” and “this is not a question of law. It is a question of who to believe about what a person of ordinary skill would have done twenty-two years ago” are both nice rebuttal arguments.
      But “The inventors and the examiner believed it was not obvious else they would not have filed/allowed the patent” is not very effective. It will of course be responded to by a defendant asserting that the best available prior art was not presented to or considered by the examiner, that much better prior art is being presented in the lawsuit, and that no reasonable jury could not have found the [complex chemicals] claim obvious.
      The actual arguments will be interesting.

    2. 3.2

      I should have preferred it if Prof Lemley in his question had written “claim” rather than “patent”. For what is ultimately in issue here is whether any one specific claim is invalid for obviousness.

      And that is self-evidently a question of law, not fact.

      But (of course) IR is right too. What was the extent of the common general knowledge of the relevant PHOSITA, back on that day, XX years ago, when the claim’s validity falls to be decided, is a question of fact. As is the issue, what acts that PHOSITA would have performed, back on that fateful day, long ago.

      Of course, resolution of these questions of fact will always go a long way towards resolving the “ultimate question” about whether or not the claim is invalid. But let’s be clear, never absolutely 1000% of the way. The court still has to address the claim, and then pass judgement on the claim, in the light of those established facts.

      Half an hour though. Really, IR? I’m sceptical of that figure. Must I take it as fact? Do you have any evidence?

    3. 3.3

      I think what you said is dead on Invention Rights.

      >Professor Mark Lemley (acting in his role as an advocate)

      This is the only role Lemley has. His advocacy for his money, which he admits he makes money burning down the patent system. There are no academic articles from Lemley that I have read that don’t grossly violate ethical standards. (There you go Paul.)

    4. 3.4

      Spot-on and well-stated. I couldn’t agree more.

  4. 2

    Surprisingly this has not yet engendered any of the usual anti-Lemley rants here? Pehaps they are confused by his representing the patent owner here? But note that this is apparently a public policy argument for judges rather than juries to make the ultimate decision on 103?
    It also raises another question: should whether the jury verdict was for, or against, unobviousness make a difference for that argument? My purely personal perception is that the Fed. Cir. has been far less likely to overturn a jury verdict of 103 obviousness [that is not overruled post-trial by the D.C. judge] than a jury verdict of unobviousness?

  5. 1

    It’s a sufficiently broad in scope issue to have a shot at cert grant.
    But is “..must the appellate court defer to a jury’s conclusion even on the ultimate legal question, as the Federal Circuit has repeatedly held in patent cases since 2012?” in Question 1 here internally consistent with Question 2’s “..a “mixed” question of law and fact, as the Federal Circuit now treats it..” ?

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