Patent Law

Pittsburgh-based patent attorney, Robert Yeagerof the law firm K&L Gates LLP, recently published the above titled article in a Washington Legal Foundation ?Legal Backgrounder.?  Mr. Yeager discusses how the U.S. Supreme Court?s KSR decision, and the PTO?s implementation of it, could lead to a significant increase in claims that successful applicants obtained patents through inequitable conduct.

In April 2007, a unanimous U.S. Supreme Court decided KSR International Co. v. Teleflex Inc., 127 S. Ct. 1727 (2007). The landmark decision plunged a knife into patent collectors, especially of the large portfolio variety, because it had the practical and immediate effect of making patents significantly more difficult to obtain. In the first quarter of this year alone, allowances of patent applications declined 43%,according to Jon W. Dudas, the Undersecretary of Commerce for Intellectual Property.

The issue in KSR was all about obviousness which is, by far, the condition of patentability most frequently debated between patent applicants and the United States Patent and Trademark Office("PTO"). Since 1961, when the Federal Circuit's predecessor court, the U.S. Court of Customs and Patent Appeals ("CCPA"), decided Application of Bergel, the lower courts and the PTO have strictly observed the teaching-suggestion-motivation ("TSM") test in deciding the question of obviousness. Under the TSM test, a patent claim is only proved obvious if some teaching, suggestion or motivation to combine the prior art teachings can be found in the prior art, the nature of the problem, or the knowledge of a person having ordinary skill in the art. KSR put an end to that practice, and suddenly, patents were much more difficult to obtain.

It is highly doubtful that the Justices could have foreseen the difficulties for the courts and Congress that their unanimity in KSR will spawn.

A View of the Inequitable Conduct Crystal Ball. Frustration with sinking allowance rates caused by faithful adherence by the PTO to the relatively vague guidance of Graham and KSR will cause patent practitioners to shift into a new gear in employing declarations under Rule 132. When patents obtained with help of such declarations are litigated, defense trial counsel will expand their efforts to establish inequitable conduct. One approach that seems to be gaining favor with trial judges, who may be disillusioned by the disturbing specter of the Federal Circuit?s de novo treatment of their carefully crafted claim constructions, is to stay discovery on and delay jury resolution of the issues of validity and infringement in favor of an early bench trial on inequitable conduct. If this practice gains a foothold and results in regular findings of inequitable conduct, the complexion of the Federal Circuit's docket will change radically. The rest is only a guess.

Read the full Backgrounder here.