Patent Law

Medela AG v. Kinetic Concepts, Inc. (on petition for a writ of certiorari 2009)

Following their success in KSR, James Dabney and John Duffy have combined again to challenge the law of obviousness. This time the focus is litigation procedure. The pair - on behalf of their client Medela - argue that a judge (rather than a lay jury) should determine whether a patent is obvious. In its petition for certiorari, Medela poses the following question:

Whether a person accused of patent infringement has a right to independent judicial, as distinct from lay jury, determination of whether an asserted patent claim satisfies the "non-obvious subject matter" condition for patentability.

The ultimate question of obviousness is a "legal determination." KSR & John Deere. And questions of law are ordinarily decided by a judge trained in the law. Markman. According to the petitioners, the black-box of the jury is problematic because it effectively limits appellate review to considering the rationales that a jury "might have adopted." I.e., the current practice does not offer "meaningful appellate review over the legal issue of patent validity." Quoting Baumstimler v. Rankin, 677 F .2d 1061 (5th Cir. 1982). En banc precedent from both the Fifth Circuit and Ninth Circuit conflict with modern obviousness procedure sanctioned by the Federal Circuit.

Notes:

• File Attachment: Medela v. Kinetic Petition for Cert Final.pdf (253 KB)
• The Graham v. John Deere obviousness procedure: When deciding the ultimate question of obviousness, the decision-maker considers (1) the scope and content of the prior art; (2) the differences between the claimed invention and the prior art; (3) the level of ordinary skill in the prior art; and (4) secondary considerations of nonobviousness. Of course, the conclusion of obviousness never logically follows from the factual elements? rather ordinarily an obviousness conclusion can only be inferred. In some ways, the jury determination of obviousness serves as a way to cover-up the gaping holes of subjectivity required in the final step of the Deere obviousness procedure. For many (if not most) litigated patents, reasonable minds will differ on the question of obviousness even when parties agree to the underlying factual background. It is precisely this type of imponderable question that calls for a jury decision as a way to maintain respect for the court.
• Procedure: If Medela is successful, future jury instructions will likely include more detailed interrogatory questions regarding the facts necessary to reach a conclusion of obviousness. Some courts prefer to avoid detailed jury questions in order to avoid inconsistent jury findings and to eliminate potential grounds for appeal.
• Professor Cotropia foreshadowed this issue in a 2007 Patent-O guest post soon after KSR. Chris Cotropia, KSR and the Line Between Fact and Law, Patently-O (May 6, 2007) at http://patentlyo.com/patent/2007/05/ksr_and_the_lin.html ("The Court in KSR introduces a procedural change, folding the TSM-like inquiry into the question of law level of the analysis.").