Posts Tagged: "KSR international v. Teleflex"

On February 5, 2024, the U.S. Court of Appeals for the Federal Circuit (CAFC) held its en banc oral argument to reconsider the obviousness test for design patents. Overall, the many judges’ questions indicated a hesitancy to change the current law, as they expressed concern with positions advanced by the patent challenger. Listening to the argument, it became instantly clear that the designer’s voice was missing from the arguments of both parties. The judges had deeply probing and important questions that need the input of a design professional. As an experienced design professional, I penned this article to highlight the designer’s voice by providing answers to several critical questions posed by the court during oral argument.

Late last week, more than half a dozen amicus briefs were filed in support of GM Global Technology Operations in a case that is set to potentially shake up design patent law. The latest briefs generally urged the en banc U.S. Court of Appeals for the Federal Circuit (CAFC) to keep the law as is in order to avoid major disruptions. In June of this year, the CAFC granted a rare en banc review of its January, 2023, decision in LKQ Corporation v. GM Global Technology Operations, which affirmed a Patent Trial and Appeal Board (PTAB) ruling that LKQ failed to show by a preponderance of the evidence that GM’s design patent was anticipated or would have been obvious.

This week, 10 amici weighed in at the U.S. Court of Appeals for the Federal Circuit (CAFC) in a rare en banc review of the court’s January, 2023, decision in LKQ Corporation v. GM Global Technology Operations. That decision affirmed a Patent Trial and Appeal Board (PTAB) ruling that LKQ failed to show by a preponderance of the evidence that GM’s design patent was anticipated or would have been obvious.

On March 13, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision in Intel Corp. v. PACT XPP Schweiz AG reversing a final written decision of the Patent Trial and Appeal Board (PTAB) that found Intel had failed to show that PACT’s patent claims were invalid for obviousness. In reversing, the Federal Circuit ruled that the PTAB improperly rejected Intel’s “known technique” rationale supporting a motivation to combine prior art references under the flexible analysis set out by the U.S. Supreme Court’s landmark 2007 obviousness ruling in KSR v. Teleflex.

You cannot get a patent for an invention if it would have been obvious to a person of ordinary skill in the art at the time. This is as true today as it was at the founding of our nation. The reason for this rule is clear—the obviousness-bar is necessary to balance rewarding innovation with free and fair competition. The Supreme Court has observed, alluding to the Constitution’s authorization for federal patents, “[w]ere it otherwise, patents might stifle, rather than promote, the progress of useful arts.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 427 (2007). While we all agree that obvious inventions should not be patented, the devil is in the details on how to draw that line between the obvious and the nonobvious.

On January 23, the Patent Trial and Appeal Board (PTAB) issued a final written decision holding all claims (1-20) of U.S. Patent No. 9,160,713 B2 (the ‘713 patent) unpatentable. The ‘713 patent, owned by Centripetal Networks, Inc. (CN), was challenged in an inter partes review (IPR) by Cisco System, Inc. (Cisco). Of the latest eight final written decisions from the PTAB, all challenged claims were found unpatentable in seven:

In KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007), the United States Supreme Court discussed legal principles of obviousness in the patent context. Justice Anthony Kennedy wrote for the Court: “Common sense teaches, however, that familiar items may have obvious uses beyond their primary purposes, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.” This simile, comparing obviousness analysis to the fitting together of pieces of a puzzle, has been referenced and quoted by a number of trial and appellate courts. Expert witnesses have used it in their testimonies. It also appears twice in the current Manual of Patent Examining Procedure (MPEP). With due respect to former Justice Kennedy, may we dispense with this terrible analogy? Although it has at least one redeeming aspect, the puzzle simile does more to confuse than to enlighten.

The focus of the appeal is the need for clarity with respect to hopelessly irreconcilable caselaw on the issue of single reference obviousness… Decisions from the Federal Circuit have created an irreconcilable split within the Federal Circuit itself regarding the proper approach to obviousness determinations, American Vehicular Sciences argues. Indeed, many commentators (ourselves included) have noticed that now more than ever on a variety of issues the outcome of a decision at the Federal Circuit is completely dependent on the panel assigned to the case. While that has been a criticism of the Federal Circuit for some time, it increasingly seems outcomes are arbitrary, capricious and wholly unpredictable— at least until you know who the judges are who will decide the case.

On August 1st, the non-profit inventor advocacy group US Inventor filed an amicus brief with the Court of Appeals for the Federal Circuit asking the court to grant a petition for en banc rehearing in American Vehicular Sciences LLC v. Unified Patents Inc. The case, which stems from the Patent Trial and Appeal Board (PTAB), involves issues regarding obviousness which US Inventor argues that the Federal Circuit should resolve through the en banc rehearing of this case… This uncertainty in determining the validity of an invention disincentivizes small inventors from taking risks and experimenting to create an invention at a time when the United States is facing an innovation crisis. US Inventor notes that China has been outpacing the U.S. in terms of startup funding for artificial intelligence developers and that patent applications filed in China has been outpacing U.S. patent applications at a rate of about 2-to-1.

Surviving inventors are incredibly rare. I have met dozens of inventors with incredible discoveries whose naïve belief in the patent system have cost them way more than they have gained. They taught a big corporation their technology either directly or via the publication of their patent. The big corporations have made tens of millions of dollars using the inventor’s technology. The inventor paid lawyers hundreds of thousands of dollars in exchange for losing his patent rights. Many of these inventors are financially and/or psychologically devastated, and every one of them has a legitimate invention. One such legitimate inventor who has been railroaded by the U.S. patent system is Tom Waugh… If he keeps trying to play the patent game of kings, he will become a pauper – a much worse position for having acted on the false promise of the modern American patent system.

In Arctic Cat Inc. v. Bombardier Rec. Prods., after unsuccessfully defending a patent infringement lawsuit, Bombardier Recreational Products, Inc. (“BRP”) appealed the district court’s denial of its motion for judgment as a matter of law. BRP argued that the asserted claims of U.S. Patent Nos. 6,568,969 (“the ‘969 patent”) and 6,793,545 (“the ‘545 patent”) were obvious, that patentee Arctic Cat failed to mark patented products, that the jury based its royalty award on improper expert testimony, and that BRP did not willfully infringe the asserted claims. BRP also appealed the district court’s award of treble damages and the ongoing royalty to Artic Cat… While the burden of persuasion under the statute is always on the patentee… the alleged infringer who challenges the patentee’s compliance with the marking statute has the initial burden of production because placing the burden on the patentee “could lead to a large-scale fishing expedition.”

In 2012, the American Invents Act established three new administrative procedures: post grant review (PGR), inter-partes review (IPR), and covered business method patent (CBM) review. In each of these proceedings, anyone may file a petition challenging the validity of an issued patent. Patent practitioners have long been trained to draft patents that survive litigation. It is no secret that most asserted patents now end up before the PTAB, and the PTAB tends to use different rules that favor the challenger. As we approach the five year anniversary of the PTAB, patent practitioners should reconsider long-held strategies. BRI and evidence standards adopted by the PTAB make surviving post-grant proceedings especially challenging. Pursue a narrowly-focused patent with clear and unambiguous terms, to avoid post-grant proceedings or survive them when instituted. A robust prosecution that addresses a range of issues, corrects Examiner’s errors, and places evidence on the record helps achieve the same goals.