Analysis: Patent law made for tinkerers?
on Nov 28, 2006 at 12:33 pm
If the world of invention is made up more of practical tinkerers than of dreamers with iconoclastic imaginations, then the Supreme Court may be on the way to creating patent law to fit that world better. And that might well be a world in which fewer patents are issued because there are fewer really new machines and processes that would be found worthy of a legal monopoly. Those seemed to be some of the implications as the Supreme Court on Tuesday agonized in public over why the legal word “obvious” should not be given an obvious meaning, in the case of KSR International v. Teleflex, Inc. (04-1350).
Although there is much that is arcane in patent law, Justice Stephen G. Breyer made it all seem very homely with a single hypothetical that not only set the tone for the entire one-hour hearing, but may have spelled doom for a legal regime that allows more patents to be issued for arfguably less innovation. Breyer wondered why a patent should be granted if a garage door had an elecronic opener at ground level that was eaten up by raccoons, leading a tinkerer to think simply of raising the device to a higher point, out of reach. Why isn’t that an obvious solution, undeserving of patent exclusivity, Breyer wondered.
What Breyer and his colleagues were driving at was the very fundamental issue of what amounts to true invention. The law bars a patent if an innovation is merely an “obvious” outgrowth of what inventors had thought of before. The aim, of course, is to reserve patents for real flashes of genius.
But, for a couple of decades, the Federal Circuit Court — the specialized appeals court for the patent system — has made it harder to challenge a patent on grounds that it was “obvious.” It has declined to find obviousness unless there is proof that those skilled in the field would have taken the prior art to the new level because of some “teaching, suggestion, or motivation” to do so. Absent those kinds of driving impulses, that Court has indicated, the new level was not obvious and therefore qualified as patentable.
Throughout Tuesday’s hearing, the Justices had difficulty understanding the Federal Circuit’s formulation — especially the part about “motivation.” Justice Antonin Scalia described it variously as “gobbledygook,” “meaningless,” “irrational,” or “imponderable.” Chief Justice John G. Roberts, Jr., mused that it was simply “jargon that lawyers can bandy back and forth,” making more business for the patent bar. And several members of the Court seemed skeptical about the phrasing because, since the Court granted review in this case, the Federal Circuit has undertaken either to modify the phrasing, or at least to spell it out further.
The Federal Circuit’s approach got some mild support during the argument of James W. Dabney of New York, a high-energy, fast-talking advocate who worked to discredit the Federal Circuit’s approach, and Deputy U.S. Solicitor General Thomas G. Hungar, who was also critical of the Circuit, but more mildly so. Justices Anthony M. Kennedy and Ruth Bader Ginsburg wondered if the formulation might have some value, if supplemented with some clarifying concepts. Justice David H. Souter wondered if there would be 100,000 new lawsuits against patents tomorrow morning if the Circuit’s phrased was cast aside, and even Justice Scalia expressed some concern about unsettling a raft of existing patents.
When Thomas C. Goldstein, the Washington lawyer defending the patent at issue (on an electronic device of an auto pedal that causes the engine to speed up or slow down), took the podium, the Justices’ skepticism about the Federal Circuit was, in a word, obvious. Goldstein suggested that the word “obvious” in the patent law should be given its plain meaning — that is, was the later invention apparent or not, compared to the earlier art in the field. But he had hardly begun when the Justices launched into even more critical appraisals of the Circuit’s approach.
Breyer made use of his garage door example, and voiced some concern that, perhaps, the Federal Circuit “was leaning too far in the direction of never seeing a patent they didn’t like,” and was perhaps fostering “too much patent protectionism.” The Chief Justice, deploying his gift for wry humor, belittled the experts that had supported the particular invention as not obvious; Roberts asked: “Who do you get to say something is not obvious? The least insightful person you can find?” Goldstein’s defense of the experts got lost in the ensuing laughter.
Goldstein used two main arguments to try to bolster the Federal Circuit: that its phrasing was simply a utilitarian and ongoing exploration of ways to make patent law workable, and that “dramatic instability” would be fostered in the patent system if the Court were to change the rules because the current test “underlies 160,000 patens issued every year.”
The invention he was defending drew some ridicule, with Kennedy wondering why the innovation was “such a big deal” and Breyer continuing to suggest that the changes made from what had gone before in auto pedal technology did not seem very novel to him. Goldstein cleverly got all nine of the Justices to look at diagrams in the briefs to try to show why his client’s alterations were a creative advance, but then Breyer undid some of the positive effect of that with a pointed question.
The Court will now deliberate the case in private over coming weeks, and issue a decision before the end of the Term.
