5th Anniversary KSR: Is Section 103 Unconstitutional?
|Written by Dale B. Halling
Law Offices of Dale B. Halling
Posted: April 30, 2012 @ 9:50 am
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The 5th anniversary of the Supreme Court’s KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007) decision is on April 30th. This is a good time to review the implications of this case, but an even better time to look into the origins and constitutionality of the Non-obviousness requirement. You might object that the jurisprudence of the non-obviousness requirement is so well established that nothing can be learned from this sort of analysis. I disagree. Patent law is under assault by the Supreme Court, the media, the ‘information wants to be free’ crowd, multinational corporations, and the economics profession. If we attempt to explain patent law based on the decisions of people who never passed the patent bar, never wrote a patent, never prosecuted a patent, and do not have a technical background, we are doomed. We need to define patent law as a natural law/right based on certain fundamental truths. This is the only way to get the non-patent attorney judge or the general public to understand patent law and understand that it represents justice. It is also why many of my comments and posts appear repetitive. For a list of some of the fundamental principles of patent law please see Foundations of Patent Law.
Holding in KSR
The holding in KSR was confused, but is generally accepted as stating that the teaching, suggestion, motivation rule (TSM rule) is not the only rule for determining if an invention is obvious. What other standards the courts and the PTO should use was somewhat nebulous, but clearly the three prong test of Graham v. John Deere Co., 383 U.S. 1 (1966) is still valid. In addition, the Supreme Court seemed to adopt the ‘I know it when I see it’ standard to obviousness. The decision overturned the relatively objective TSM test for a subjective non-test.
Practical Results of KSR
I am not a litigator, but my impression is that the KSR decision has increased the uncertainty of the obviousness decision at trial and increased the complexity of presenting and defending obviousness. Despite this, I think that the CAFC has put KSR in a fairly small box (Eric Guttag could probably give a multi-hour presentation on this point).
From a prosecution point of view, KSR has had less impact than David Kappos taking over from Jon Dudas and John Doll. The Jons’ unchecked, rogue policy of ‘rejection equals quality’ almost shut down the patent office for all but the largest multinational companies.
KSR requires patent prosecutors to state the benefits of their technology in more detail in the specification, write more of the specification into the claims, and file more replies/appeals. Certain areas of technology are still persona non grata at the PTO. For instance, computer technology directed to financial transactions, high level computer programs, and so called business methods.
History of Non-Obviousness
The generally agreed beginning of section 103 is the Supreme Court case of Hotchkiss v. Greenwood, 52 U.S. (11 How.) 248 (1851). This case first articulated the idea that an improvement that was the subject of a patent had to be more than “the work of the skilful mechanic.” The case involved making door and other knobs of all kinds of clay used in pottery, and of porcelain. The Supreme Court decision made the common error of pointing out that each of the elements in the invention were individually known.
But in the case before us, the knob is not new, nor the metallic shank and spindle, nor the dovetail form of the cavity in the knob, nor the means by which the metallic shank is securely fastened therein. All these were well known, and in common use, and the only thing new is the substitution of a knob of a different material from that heretofore used in connection with this arrangement.
By the way, this is one of those fundamental truths of patent law.
Every invention in the history of the world is a combination of known elements/steps
The reason for this is Conservation of Matter and Energy – you cannot create something from nothing. This idea is implicit in 35 USC 112, which requires the inventor explain their invention so that one skilled in the art can practice the invention.
Back to Hotchkiss, the ruling states the well known idea that for an invention to be patentable, it must be more than just the work of a skillful mechanic. Today this is stated as the invention must have taken more than just the work of “one skilled in the art.” For a very interesting discussion of the history of the nonobviousness requirement see Novelty and the Hotchkiss Standard.
Note that Justice Woodberry ‘s dissent in the Hotchkiss case argued that the statute only required the invention be new and did not say anything about the work of a skillful mechanic. Was there any justification in the statute for the Supreme Court’s ruling in Hotchkiss? The 1790 Patent Act stated that the Patent Board was only to grant a patent if the invention was “sufficiently useful and important.” See Patent Act of 1970. The patent statute of 1836 also contained a clause that said the Patent Office could deny a patent to an invention the Commissioner deemed to be “insufficiently useful and important.” However, it appears that this part of the statute was almost never invoked. Either way, the statute did not give this power to the Supreme Court or any other Court. As a result, Hotchkiss was a clear case of judicial activism. The Court just made up a requirement that was not in the statute and could not be considered just an interpretation of the law.
Why the Non-obviousness Standard is Unworkable
Remember when I said words have meaning? Let’s examine the meaning of the words NOVEL and OBViOUS in the context of statute. The key portion of the non-obviousness statute states:
A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. (underlining added)
Based on the wording and the fact that section 103 was added later than the novelty requirement, logically 103 is intended to be an additional requirement above the novelty requirement. According to Dictionary.com, novelty means “of a new kind; different from anything seen or known before: a novel idea.” The non-obviousness requirement logically requires something more than an invention be novel. According to Dictionary.com, obvious means, “easily seen, recognized, or understood; open to view or knowledge; evident.” It is axiomatic to patent law that whether an invention is non-obvious, has to be determined at the time the invention was made or in other words before the invention was known. How can an invention that has not been created, be easily seen, recognized, or understood; open to view or knowledge or evident (obvious)? Clearly, an invention that has not been made cannot be open to view and how can you have knowledge of something that does not yet exist? Evident means, according to Dictionary.com, “plain or clear to the sight or understanding.” Is it any wonder that non-patent attorney judges cannot make sense of Patent Law? The law is contradictory on its face.
Is Section 103 Constitutional?
The Constitution states at Article I, Section 8, Clause 8:
To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.
The drafters of the Constitution only defined ONE RIGHT in the Constitution and that was the Right of inventors and authors. When the founders talked about ‘the right’ they meant a Natural Right. A natural right is a right that exists, whether government exists or not – of course enforcing that right is another story, which is why governments are instituted among men, see Declaration of Independence.
If the Constitution says that inventors have a right in their discoveries, the first question should be: what is an invention? Some people have suggested that an ‘invention’ can be anything that Congress decides it is. But this is clearly nonsense. If that were the case, then Constitution would be meaningless. This is not ‘Alice in Wonderland,’ words have meaning. So what is an invention? Inventions belong to the genus or class of human creations. However, not all human creations are inventions. For instance, a painting or a musical score is a human creation, but it is not an invention. Reproduction or making another copy of something is not invention and not a creation in the sense used herein.
We need to differentiate inventions from other human creations. Inventions belong to the species of human creations that have an objective result. What do I mean by an objective result? Examples will probably be the best way to examine this. A painting is a human creation, but it is not an invention. A painting has a subjective result – namely the viewer’s reaction. Logically, all human creations either have an objective or a subjective result or goal, there is no other choice. This point can appear confusing with respect to mathematics. Does a Fourier Transform have an objective result? For patent attorneys, the requirement is commonly referred to as the invention must be ‘useful’ under 101. The synthesis of a new chemical is not patentable if the inventor cannot describe a practical use (industrial applicability) for the chemical. The same is true of mathematical formulas. The definition of an invention requires that it be useful or have, what I call, an objective result, which explains the basis of 101.
An invention is a human creation, which means that a human was the creator of the invention. That person is called the inventor. Because we are discussing creation, not reproduction, to be the inventor you have to be first. That is where the Novelty (102) requirement comes from. There is nothing in the definition of Invention that implies any sort of non-obviousness requirement or ‘more than a skilled mechanic.’ Neither the Supreme Court nor Congress have the power to ignore the Constitution, which requires that The Exclusive Rights of inventors be secured. Therefore, 35 USC 103 is unconstitutional.
The origin of Section 103 was a Supreme Court case that failed to follow the law. The more than a skilled mechanic grew into the nonsense of requiring a flash of genius. The codification of this bit of judicial activism results in the non-obviousness requirement for patents. This terminology was double speak: requiring something that was unknown to be apparent. The definition of invention does not include any sort of non-obviousness requirement and the Constitution requires Congress and the Courts to uphold the exclusive rights of inventors. As a result, section 103 is unconstitutional.
Words have meanings and judicial activism has consequences. The non-obviousness standard has inhibited the creation and introduction of new technologies and therefore made us all poorer. As just one example of this see Robert Kerns, inventor of the intermittent windshield wiper. Because of the non-obviousness standard, automobile manufacturers were able to steal his invention and drag out court cases for years. Robert Kerns had a Phd. in electrical engineering and was an intelligence officer in the armed forces as a teenager. Instead of inventing or teaching, Dr. Kearns spent his life litigating against an auto industry that felt no shame in stealing his invention. Another tragic example is that of Edwin Armstrong, inventor of the superheterodyne receiver and FM. RCA’s theft of FM radio destroyed this genius to the determent of all mankind.
Australia seems to have figured this out and now has a patent, called the innovation patent that only requires novelty.
Invention Theft is Worse Than Murder