by Dennis Crouch
The new petition in SawStop v. USPTO (Supreme Court 2022) focuses the question of whether COURTS have power to create non-statutory patentability doctrines.
Does the judiciary have the authority to require a patent applicant to meet a condition for patentability not required by the Patent Act?
SawStop Petition for Certiorari. You might imagine this argument being raised as tied to any number of patent doctrines: atextual eligibility limitations; assignor estoppel; doctrine of equivalents, etc. This particular case focuses on obviousness-type double patenting (OTDP). Question 2 of the petition focuses the question further: “Is the judicially created doctrine of nonstatutory double patenting ultra vires?”
Section 103 of the Patent Act generally defines the doctrine of obviousness and instructs tribunals to look to the prior art and consider whether the claimed invention is sufficiently beyond the prior art. But, even if a claims are found patentable under Section 103, the USPTO still considers obviousness-type double patenting. Even if there is no prior art, the USPTO still bars a patentee from obtaining a separate patent claiming an obvious variation of already-issued claims held by the patentee/inventor. Thus, although 102(b)(2) explains that certain prior-filed patents are not prior art when attributed to the applicant/inventor, OTDP steps in on the back-side to effectively assert those excused documents as prior art. Pause here to note that one big difference between obviousness and OTDP is that applicants can skirt OTDP rejections by filing a terminal disclaimer that effectively links the two similar patents together along two axes: same term and same owners.
My middle school shop teacher was missing fingers courtesy of a table saw. Yours? Steve Gass has a PhD in physics and also a patent attorney. He was doing some amateurs woodworking when he conceived of his SawStop technology. The basic idea: if the spinning blade ever touching human skin, the electrical connection triggers an emergency brake that stops/retracts the blade within 5 milliseconds. “Fast enough to turn a life changing event into a minor cut.” Gass has over 100 patents and runs the innovative product company SafeSaw.
Gass’s U.S. Pat No. 9,927,796 was filed back in 2002 — claiming priority to a 2001 provisional application. That patent finally issued in 2018–only after SawSafe filed a civil action and received a court-judgment in its favor. A 1974 patent had disclosed use of a safety circuit and a braking-means. However, the district court concluded that the prior art was not enabling — i.e., a person of skilled in the art would not be able to construct (or even design) the claimed invention without undue experimentation. [2016 Decision].
Another 16 issued patents also claim priority back to this 2002 application. One application is still pending, Application 15/935,432, that claims an obvious variant of what has already been patenting. The USPTO rejected the ‘432 application based upon the judicially created non-statutory doctrine of obviousness-type double patenting. SawStop did not want to file a terminal disclaimer on this valuable patent and instead appealed. On appeal, the Federal Circuit affirmed without opinion in a R.36 Judgment. Now, SawStop has petitioned the Supreme Court asking that the doctrine be eliminated.
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Although the petition does not cite the Supreme Court’s recent abortion decision, it certainly picks-up upon some of the same themes:
- A right to abortion “is nowhere mentioned in the Constitution.” Similarly, obviousness type double patenting has no grounding in the Patent Act.
- The fact that a precedent is old does not convert that precedent to a sacred text.
The Supreme Court in Bilski addressed this issue to some degree in the context of the non-statutory categorical bars of abstract ideas; laws of nature and natural phenomenon.
While these exceptions are not required by the statutory text, they are consistent with the notion that a patentable process must be “new and useful.” And, in any case, these exceptions have defined the reach of the statute as a matter of statutory stare decisis going back 150 years.
Bilski v. Kappos, 561 U.S. 593 (2010). The Bilski court found a small textual hook, but also identified the doctrine as built upon longstanding precedent.
The longstanding nature of precedent is important in the patent context. But unlike in the Constitutional abortion context, we have always had direct statutes guiding patent issuance and enforcement, beginning with the First Congress in 1790. In the area of obviousness though, the doctrine was developed by courts and then implemented by statute in 1952. In Graham though, the Supreme Court indicated that, with minor exceptions, the 1952 Act maintained all the old precedent. Thus, in essence
Double Patenting in the Statute. In its 2014 Abbvie decision, the Federal Circuit wrote that Obviousness Type Double Patenting is “grounded in the text of the Patent Act.” In particular, the court honed-in on Section 101’s use of the singular article “a” in describing what is granted to an inventor: “a patent.”
While often described as a court-created doctrine, obviousness-type double patenting is grounded in the text of the Patent Act. . . . Section 101 reads: “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, … may obtain a patent therefor.” 35 U.S.C. § 101 (emphasis added). Thus, § 101 forbids an individual from obtaining more than one patent on the same invention, i.e., double patenting.
Abbvie Inc. v. Mathilda and Terence Kennedy Inst. of Rheumatology Tr., 764 F.3d 1366, 1372 (Fed. Cir. 2014). But Judge Dyk’s conclusions in Abbvie are not well grounded themselves as there are several ways this provision could be interpreted. It also proves too much, since there are ways for a patentee to obtain multiple patents covering patentably indistinct inventions: (1) via terminal disclaimer; (2) via restriction. If the patentee files a terminal disclaimer then the patent office will allow multiple patents to issue. If the patentee files a divisional application (following a restriction) then the patent office will allow multiple patents to issue even without a terminal disclaimer.