The Biggest Problem in Patent Law: Rates

The comments on this and other posts on this blog are my opinion.

The Biggest Problem in Patent Law: Rates
There are many aspects of the patent system that may be reformed, but one of the most important is an analysis of the intangibles rates of creation of new law (from the district courts and the Court of Appeals for the federal circuit) versus the rate at which it is interpreted, organized and fixed (CAFC and the Supreme Court). Essentially, the creation of new law is about double the rate (approximate guess, but it’s got to be pretty close or more) at which it is interpreted, and organized at the Supreme Court and this leads to an ongoing corpus of unworkable patent law that is quicksand for organization, structure and predictability in patent law.

A key example is the teaching suggestion or motivation to combine test that was created by the CAFC. It states that there must be a teaching, suggestion or motivation (TSM test, hereinafter) to combine elements in prior art to show a patent as obvious. The law has since 1966 said the Graham factors determine the whether a patent is obvious Graham v. John Deere Co. (383 U.S. 1, 148 USPQ 459 (1966)). The Graham factors look at 1) the scope and content of the prior art 2) the level of ordinary skill in the art 3) the differences between the claimed invention and the prior art; and 4) objective evidence of obviousness. Basically, the TSM test explicitly requires a teaching suggestion or motivation to combine elements in prior art which is completely opposite the Graham factors each of which require an objective non-specific evaluation of prior art and patents. Stated differently, the TSM test, a test which people openly and assiduously applied, was completely contrary to the established law in the Graham factors. This will most certainly create some unworkable law because from at least 1997 (Gambro Lundia AB v. Baxter Healthcare Corp., 110 F.3d 1573, 1579, 42 USPQ2d 1378, 1383 (Fed. Cir. 1997)) 1 the TSM test was dispositive on obviousness until it was overturned in KSR v. Teleflex in 2007 (KSR International Co. v. Teleflex Inc. (KSR), 550 U.S.___, 82 USPQ2d 1385 (2007)). So for at least 9 years district courts and CAFC not to mention practitioners and patent Examiners were applying law squarely inconsistent with the Graham factors. This rate of creation of new law has been detrimental to organization, structure and predictability because some law followed the TSM test, and some law followed the Graham factors.


Now it should be noted that there are many grey areas of law that require the district courts and a jury to determine the specific meaning of legally interpreted terms and material facts determined by juries. However, purely as a matter of law, the TSM test states the TSM is dispositive on obviousness and is logically inconsistent as a matter of law with the Graham factors determination of obviousness. In other words it’s important to note that the inconsistency is not mere bickering at multiple interpretations of law, but a logically inconsistent law that was applied contrary to another area of law for at least 9 years. This was a recipe for dissonance in patent law.

The Supreme Court responded brilliantly in 2007 to the TSM test by interpreting with a broad brush by overturning the TSM test as inconsistent with precedent. By doing this the law was changed, practitioner’s confusions assuaged, and the law finally set clear on what the obviousness test really was. However, there were still 9 years of precedent that was created and partially undone in 2006. It would and will take years to undo all the precedent created in those 9 years by reapplying the test set forth in KSR v. Teleflex.

The problem comes down to one of rates: Is the rate at which the Supreme Court interprets and organizes patent law fast enough to keep up with the rate new law is created at the CAFC and the district courts? It may not be now because leaving 9 years for potentially inconsistent law to build up creates an unworkable corpus of patent law to build up. I don’t know if the Supreme Court denied cert on this issue during those nine years and I don’t fault anyone for trying to interpret an area of law so complex and with as many issues involved as patent law. But the more the Supreme Court paints with broad strokes that remove complexities that are inherent to the already difficult problem of describing the boundaries of a technology in words, the more the rates of creation of new law will meet the rate of organization of law, leading to more overall structure and predictability in the rapidly increasing corpus of patent law. I believe this will tremendously benefit the patent system, an absolutely vital part of our economy.

1 - http://www.ll.georgetown.edu/Federal/judicial/fed/opinions/98opinions/98-1553.html