Supreme Court Overrules the Court of Appeal’s Nonobviousness Standard - KSR Intern. Co. v. Teleflex 

 

In 1992, Schlicher explained the ways in which the law of nonobviousness developed by the Court of Appeals for the Federal Circuit was inconsistent with the approach of the United States Supreme Court.  He described how the Court of Appeals’ suggestion - motivation test meant that “[i]f almost any independent thinking was required to derive the invention from the prior art, the invention was not obvious.”  He said that “[t]he absence of suggestions or motivation in the written prior art hardly seems a compelling standard for obviousness.”  He also described how the Court of Appeals’ test was inconsistent with the Supreme Court’s approach to inventions that were combinations of old parts.  (“By that rule [the suggestion-motivation test], the Court of Appeals also demolishes the Supreme Court’s special rule for combinations of old parts that asks if the old parts do something different in combination than they would do separately.”).  In 2007, the Supreme Court decided KSR Intern. Co. v. Teleflex. The Court overruled the Court of Appeals’ suggestion or motivation test, said that an invention may  be obvious even thought a person of ordinary skill would be required to exercise creativity to make it, and insisted that the Court of Appeals follow the Supreme Court’s approach to inventions made by combining old parts and components.

 

Federal Circuit Insists that the Nonobviousness Standard Be Applied the Same Way in All Technical Fields – Ochiai 

 

In 1994, in testimony before the Patent and Trademark Office, Schlicher said there should be no separate or special legal standards for applying the nonobviousness requirement to biotechnology inventions, and that lawyers should not read decisions applying the general standards in one factual setting as establishing a legal principle applicable to similar situations.  In 1995, the Chief Judge of the Federal Circuit said this was correct and the incorrect approach must “cease.” In Re Ochiai, 71 F.3d 1565 (Fed. Cir. 1995).

 

Federal Circuit Modifies the Standards for Applying Section 102(b) – Weatherchem, Mahurkar, Ferag.

 

In 1992, Schlicher noted that Court of Appeals’ use of four policies to guide application of the on sale bar omitted the main goal of the patent system and this omission led the courts apply the on sale bar to invalidate patents in situations where there the reduction in incentives to invent was unjustified.  In 1995, Judge Frank Easterbrook (sitting by designation in a district court) noted this omission and found that it lead to the startling result that not all nonexperimental sales were section 102(b) events.  The Federal Circuit affirmed.  Matter of Mahurkar Double Lumen Litigation, 831 F.Supp. 1354 (N.D.Ill. 1993), aff’d 71 F.3d 1573 (Fed. Cir. 1995).  Schlicher also said that, of the four policies then employed, the policy against an inventor’s commercial exploitation of the invention for significantly longer than the term of one patent was and should be the most important policy.  In Ferag AG. Quipp Inc., 45 F.3d 1562, 1565, 33 USPQ2d 1512, 1515 (Fed. Cir. 1995), the Court of Appeals agreed and said this was the main policy of section 102(b).  In 1992, Schlicher also said wrote that the Court of Appeals’ use of four policies to guide application of the on sale bar did not translate into a clear or necessarily sensible guide for deciding that issue.  In 1998, the Court of Appeals ceased using this four policy test as unnecessarily vague.  Weatherchem. Corp. v. J.L. Clark, Inc., 163 F.3d 1326, 1333 (Fed. Cir. 1998). 

 

Federal Circuit Says that Products and Processes Carrying Out Mathematical Formulas May Be Patented – State Street Bank 

 

In 1992, Schlicher said that the Supreme Court was wrong to say that products and processes that convert some numbers into other numbers, that is, implement mathematical formulas, should not be patentable subject matter, because such formulas are unpatentable ideas or scientific principles.  Judge Newman suggested this was the correct view in In re Allapat, 33 F.3d 1526 (Fed. Cir. 1994), and the late Judge Rich expressed the same view in State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368 (Fed. Cir. 1998).

JOHN W. SCHLICHER

PATENTS, PATENT LITIGATION, PATENT DISPUTE RESOLUTION AND

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