Patents at the Supreme Court

Arti Rai

Patents at the Supreme Court

In a burst of activity not seen for decades (at least four decades and arguably more than a century), the Supreme Court has recently embraced the intricacies of patent law. Just last week, the Court handed down two major patent decisions, KSR v. Teleflex and Microsoft v. AT&T. These decisions follow closely upon Medimmune v. Genentech, handed down a few months ago, and three important cases from the 2005 term.

While the Court’s interest in patent law has been welcomed by the popular press and by at some legal academics, the reaction from many practicing patent lawyers has been decidedly negative. An easy explanation for the lawyers’ reaction is that the Court’s decisions substantially dilute the power of patents and thus the power of patent lawyers. Patent lawyers prefer the activities of the “expert” Court of Appeals for the Federal Circuit, which hears all appeals in patent cases and is quite pro-patent. In the case of both the patent lawyers and the “patent court,” we have the familiar story of expertise going hand in hand in capture.

But the capture hypothesis may be a bit too easy. In at least one recent case – the Festo decision of 2002 – the Supreme Court stepped in to overturn a case in which the Federal Circuit had dramatically limited patent scope.

Notably, the KSR case from last week shows the Justices attacking not the Federal Circuit’s pro-patent tendencies but, rather, its “rigid and mandatory formulas” for determining whether an invention is “obvious” and therefore unpatentable. In KSR, the Supreme Court stresses that such formalism – specifically a requirement that defeating patentability depends on written proof of a “suggestion to combine” invention elements that are publicly available – does not comport with the realities of ordinary scientific and technological creativity. In Festo, the Supreme Court similarly rejected a rigid rule – in that case, a rule harshly punishing a patentee for amending its claims for any reason during the application process. The Festo Court adopted instead a less rigid, and arguably more “pro-patent,” presumption.

So here is some speculation. More so than other lawyers, patent lawyers believe that legal decision making can and should be made as rule-like as possible, with all of the attendant predictability that allegedly comes with rules. Indeed, patent lawyers’ convergence around the mantra of predictability led to the creation several decades ago of the Federal Circuit. The hope was that this specialized patent court would enunciate crystalline rules that could be applied precisely in many, if not most, circumstances.

As any scholar of the rule/standards debate knows, however, rules may lead to socially undesirable results. For example, the requirement of a written “suggestion to combine” meant that trivial combinations could be patented simply because no one had bothered to suggest the obvious combination in writing. Additionally, ostensibly crystalline formulations (e.g. injunctions to focus on the “plain meaning” of words in construing documents) may leave much room for interpretation and discretion. The algorithms created from time to time by the Federal Circuit to guide the lower courts in determining the meaning of words in patent claims don’t appear to have yielded much predictability. In fact, a favorite complaint of patent lawyers is that one does not know what a patent actually covers until the Federal Circuit has opined on the question.

At the end of the day, as the Supreme Court appears to have recognized, there are good reasons to think carefully in any given circumstance about whether rules or standards work best. For this reason, if for no other, the Supreme Court’s intervention is welcome.
Posted 5:16 PM by Arti Rai [link]