Terms and Concepts
KSR v. Teleflex (KSR)
The Supreme Court’s decision in KSR v. Teleflex altered the obviousness calculus in a fundamental way by making the obviousness determination more subjective. The full scope of KSR’s impact on patent reexamination remains to be seen, but initial reports indicate that the results may be dire for patent owners, particularly in the “predictable” arts. Extensive research about the impact of KSR has been done by many groups.
Impact of KSR on Reexamination Practice
The research demonstrates the impact is significant in original prosecution. For instance, perhaps the most extensive, publicly available sample and analysis is by Microsoft’s Corporate Vice President for IP Policy and Strategy, Marshal Phelps et al. His research was presented at Sedona Patent Litigation 2008 [Microsoft Obviousness Data Research Slide Deck in Obviousness Panel tab of course notebook of Sedona PL08]. Their analysis shows the most effective way to challenge an obviousness rejection in predictable arts is to persuasively argue, with factual support, that a claim feature is not taught by the references. If the references in fact show each element, either explicitly or inherently, then it seems to be very difficult to overcome an obviousness rejection. Many argue that the mere existence of all of the claim elements in the prior art as the basis for a finding of obviousness turns this test of patentability on its head since most inventions are “combinations of old elements.” This applies to some of the most important inventions of all time.
It is clear from recent Federal Circuit and Board of Patent Appeals and Interferences (BPAI) decisions that mere attorney argument is not sufficient in many cases to prove non-obviousness [See Sundance, Inc. v. Demonte Fabricating LTD., No. 2008-1068, -1115 Slip op. at 4-7 (Fed. Cir. Dec. 24, 2008)]. The attorney is typically not an expert in the technology of the claimed invention and is not a person of ordinary skill in the art [Id. (disallowing a patent expert’s testimony stating that “[d]espite the absence of any suggestion of relevant technical expertise, [the patent expert] offered expert testimony on several issues which are exclusively determined from the perspective of ordinary skill in the art”)].
To prove non-obviousness, it seems the best tack is for the story of the invention to be told in its full glory so that the factual predicates are found in the record to support the desired legal conclusion of non-obviousness. While KSR makes many statements about what is or is not obvious, it is clear from Supreme Court law that what the decision-maker requires is all of the relevant facts about the invention and its predecessor technology. Thus it behooves the patent owner to put all of the necessary factual predicates in the reexamination record to support the desired legal conclusion of non-obviousness. Failure to do so could result in the CRU finding the claims not patentable and the BPAI and Federal Circuit being limited to a record that will not permit a reversal.
KSR is seen by some judges as providing examples of what might constitute good factual predicates to support non-obviousness, but not as a definitive guide on how best to set forth the full story of the invention. These factual predicates include the so-called “secondary considerations” or “objective evidence” of non-obviousness, such as unexpected results, long felt need, failure by others and commercial success. But this list is not definitive and counsel for the patent owner should be vigilant and creative in ferreting out and presenting all factual evidence that supports patentability.
One crucial consideration is how to get factual evidence into the record during reexamination. Factual evidence can be in the form of trial evidence or testimony, publication, award, sales information, product reviews, etc. Should it be from an expert or at least from a witness considered to be a POSITA? The answer often is yes, albeit it is a tactical decision just to have POSITA qualifications since a qualified technical expert can typically also opine as a POSITA. Reexamination counsel for the patent owner is ill advised to assume either role explicitly or through attorney argument unless he/she can be qualified as if he/she is testifying as such in court [Id.].
How should this factual evidence from the expert or POSITA be provided to the CRU? It is best if it is in the form of an affidavit or declaration. But such a submission raises several concerns. First is the specter of inequitable conduct. Reexamination counsel for patent owner is particularly vulnerable because the law is somewhat confused in this area of what constitutes sufficient disclosure of pecuniary benefit between affiant/declarant and the patent owner. However, it behooves the drafter to err on the side of comprehensive disclosure, but such approach increases the size of the administrative record, something the PTO has indicated it would like to avoid, all things being equal.
Since the duty of disclosure does not apply to reexamination counsel for third party requestors, can “reverse” inequitable conduct be found by the PTO, BPAI or the courts for requestor submissions clearly hiding the ball from the reexamination examiners? Or is the only possible violation that of 37 C.F.R. § 11.18? And if the latter is the case, how would such a violation be raised? Would it be done by OPLA based on a petition from the patent owner that would be referred to The Office of Enrollment and Discipline (OED)? We know the PTO is thinking about these issues, but we do not know of any public information from OED showing such a violation has been successfully prosecuted. This different standard of care between reexamination counsel for patent owner and reexamination counsel for third party requestor troubles many people and we expect it to be addressed by some tribunal soon.
The second concern is that the reexamination examiners have no mechanism and little experience at best in assessing the competency and veracity of the information and analysis presented in written submissions. This is a broader problem than the mechanisms available to and experience possessed by reexamination examiners in that in ex parte prosecution, there traditionally has been little use of affidavits and declarations. The third concern is the strict page limits imposed on responses to Office actions. The page limit issue is so sufficiently important that it is addressed separately. We note however, that if the submission is denominated as “factual” as opposed to “argument” it is NOT counted in the page limit.
We expect that the obviousness area of patent practice will experience extensive attention in the next year as applicants, patent owners, and challengers grapple with the practical implications of KSR in PTO examinations, in the CRU, at the BPAI, and in the federal courts and at the ITC.
- Obviousness Rejection
- POSITA Qualification
- Fact Versus Argument