Amicus Curiae Brief — KSR Intern. Co. v. Teleflex Inc.

76 ap

re ctl ae Supreme Court, U.S.

f 4 x FILED

2 5 2006

No. 04-1350 SEP

OFFICE OF THE Liew:

In the

Supreme Court of the Anited States

.

KSR INTERNATIONAL Co.,

Petitioner,

VS.

TELEFLEX INC. and

TECHNOLOGY HOLDING Co.,

Respondents.

+

On Writ of Certiorari to the

United States Court of Appeals

for the Federal Circuit.

+

BRIEF OF LEE THOMASON

AS AMICUS CURIAE IN SUPPORT

OF RESPONDENTS.

LEE THOMASON

SPALDING & THOMASON

106 North 4"" St.

Bardstown, KY 40004

(S02) 349-7227

Sept. 25, 2006 Amicus Curiae

and Counsel

|

i

QUESTION PRESENTED

Whether the Federal Circuit erred in holding

that a claimed invention cannot be held “obvious,”

and thus unpatentable under 35 U.S.C. §103(a), in

the absence of some proven “’teaching, suggestion,

Or motivation’ that would have led a person of ordi-

nary skill in the art to combine the relevant prior art

teachings in the manner claimed.”

ii

TABLE OF CONTENTS

Page

rr St ewedeeene 1

I = ss ee ee ee eres il

TABLE OF CITED AUTHORITIES ........... iV

iT SD co re os l

STATEMENT OF THE CASE E_.......eauee: 3

SUMMARY OF THE ARGUMENT __............. 4

0 5 a Re ere Peres e & 5

l. AMPLE GROUNDS TO AFFIRM ......... 5

Zz NOVEL COMBINATIONS, EVEN THOSE

NON-PIONEERING COMBINATIONS,

ARE ENTITLED TO PATENT

PROTECTIONS, INCLUDING THE .

PRESUMPTION OF VALIDITY. _......... 6

3. AFFIRMANCE IS WARRANTED UNDER

THE STANDARD OF REVIEW

APPROPRIATE TO RULE 56 RULINGS,

As WELL As, UNDER THE REVIEW

STANDARD APPLIED TO

EQUITABLE DECREES. _.............. 7

ill

4. INVALIDATING A PATENT UPON

A SHOWING OF OBVIOUSNESS

IS AN EQUITABLE REMEDY. ........... 9

5. PETITIONER AND AM/C/ PROPOSE

CHANGES TO PRECEDENT THAT

REQUiRE LEGISLATIVE ACTION. ....... 12

CONCLUSION

iV

TABLE OF CITED AUTHORITIES

SUPREME Court CASES.

Campbell v. City of Haverhill,

ISS US. GIO (iGPa). ho ostiese

Dann v. Johnston,

S25 US. 259 (I97@) i nek eens

Diamond Rubber Co. v.

Consolidated Rubber Tire Co.,

220 U.S. 428,435 (1911) ~—.........

eBay v. MercExchange,

_ £' ae

126 S.Ct. 1837 (2006) _—.............

Graham v. Deere, 383 U.S. 1 (1966) ....

Washburn & Moen Mfg. Co. v.

Beat Em All Barbed Wire Co,

143 US. 273 (PS) ee eeven

FEDERAL CIRCUIT CASES.

Alza Corp. v. Mylan Labs,

2006 WL 2556356

(Fed. Cir. Sept.9,2006) .......

Page

v

Cross Med. Prods., Inc., v.

Medtronic Sofamor Danek, Inc..,

424 F.3d 1293 (Fed. Cir. 2005) ......... 9

In re Napier,

55 F.3d 610 (Fed. Cir. 1995) ........... 9

In re Technology Licensing,

423 F.3d 1286 (Fed. Cir. 2005) ......... 9

Tegal Corp. v.

Tokyo Electron America, Inc.,

237 F.3d 1331 (Fed. Cir. 2001) ......... 9

STATUTES.

aes teeta cet"

ee 7, 10, 13, 14, 15, 17

EE SE ee eee 14

Act of April 17, 1800 (2 Stat.37) = ....... 1]

Act of February 19, 1819 (3 Stat. 481) ..... 1]

OTHER AUTHORITIES.

Blackstone's Commentaries on the Laws of England,

Ne ) Se re 10

POMEROY, A Treatise on Equity Jurisprudence,

I =O he 1]

No. 04-1350

In the

Supreme Court of the Gnited States

KSR INTERNATIONAL Co..,

Petitioner,

VS.

TELEFLEX INC : and

TECHNOLOGY HOLDING Co..,

Respondents.

On Writ of Certiorari to the

United States Court of Appeals

for the Federal Circuit.

BRIEF OF LEE THOMASON

AS AMICUS CURIAE IN SUPPORT

OF RESPONDENTS AND AFFIRMANCE.

Interest of Amicus Curiae

Lee Thomason respectfully submits this brief

as amicus curiae, in support of Respondents, pur-

suant to Supreme Court Rule 37.2(a).! Both the

! Pursuant to Supreme Court Rule 37.6, amicus curiae

states that counsel for the parties have not authored any

portion of this brief, in whole or in part. No person or

2

Petitioner and the Respondents have filed written

consent to the filing of amicus briefs with this

Honorable Court.

The interest of the undersigned as amicus

curiae is as a registered patent attorney, who litigates

patent cases, including in courts within the 6%

Circuit, from which the KSR case comes, and

including cases involving the obviousness defense.

Also, amicus has presented appeals to the Court of

Appeals for the Federal Circuit since admission there

in 1986. The undersigned has petitioned for

certiorari from rulings of the Federal Circuit, since

having been admitted to practice before the Supreme

Court in 1990.

Further, amicus has participated actively in

patent legislation reform efforts, by submitting com-

ments at hearings, and to legislative committees.

Previously, amicus chaired the subcommittee of a

major, IP law organization, advocating legislative

reforms for the inequitable conduct defense to

infringement. Also, amicus chaired a regional bar

association IP section, and presents legal education

programs on patent-related topics.

entity, other than the amicus made any financial

contribution to the preparation or submission of this

amicus brief.

3

STATEMENT OF THE CASE

SIGNIFICANT ASPECTS OF THE DECISIONS BELOW.

In the District Court, obviousness was decided

on a motion for summary judgment.

The Federal Circuit reversed for a lack of

adequate findings, specifically, findings inadequate

to support the lower court’s conclusion about a

teaching, motivation, or suggestion in the prior art to

combine references.

Thus, this case can be viewed simply as a

decision based on an “incomplete analysis” or on

inadequate record, which the Circuit Court ruled

should be developed fully.

4

SUMMARY OF ARGUMENT

The Federal Circuit ruling that the lower court

did not make adequate findings to support a

summary judgment of obviousness should be

affirmed, and the case remanded for further findings.

The Petitioner contends that evidence of a

teaching, motivation, or suggestion to combine the

prior art is irrelevant to a determination of

obviousness. Proof about any extant teaching,

motivation, or suggestion to combine the prior art is

relevant evidence, about which well-developed

findings should be made, before a duly-issued patent

is declared obvious.

Suggestions from Petitioner and amici to

abandon reliance on evidence of a teaching, motiva-

tion, Or suggestion to combine are misplaced, or

require legislative action. Instead, this Court should

favorhaving obviousness rulings reviewed for

an abuse of discretion, as are all equitable

determinations.

5

ARGUMENT

1. AMPLE GROUNDS TO AFFIRM.

This Court could affirm the Circuit Court on

several grounds, primarily, that a summary judgment

of obviousness cannot rest on inadequate findings, or

issues Open to dispute.

The Petitioner contends that evidence of a

teaching, motivation, or suggestion to combine the

prior art is irrelevant to a determination of obvious-

ness. On that premise, the Petitioner argues that the

District Court need not make further findings.

The District Court narrowed the inquiry to the

“nature of the problem to be solved.” The Federal

Circuit noted that, and reversed because the lower

court “applied an incomplete” test of whether the

prior art contains a teaching, motivation, or sugges-

tion, either explicitly or implicitly, to make the

patented combination.

This Court should affirm because assessing

whether, or not, the prior art provided any teaching,

motivation, or suggestion to combine known ele-

ments, is relevant evidence, about which complete

findings should be made in every obviousness case.

6

That evidence is relevant to the “content of” the prior

art, and it fleshes out whether the “differences” were

obvious, or not. If that evidence can be presented, or

if none can be shown, then that shows obviousness,

Or non-obviousness. Probative evidence should

never be ignored, especially when the grant of a duly

examined and issued patent is being challenged.

Here, the District Court findings may be

deemed inadequate to review whether a teaching,

motivation, or suggestion existed in the prior art,

explicitly, or implicitly, or whether that evidence was

not genuinely in dispute.

2. | NOVEL COMBINATIONS, EVEN THOSE

NON-PIONEERING COMBINATIONS, ARE

ENTITLED TO PATENT PROTECTIONS,

INCLUDING THE PRESUMPTION OF VALIDITY.

The question here, is presented when the

invention comprises known elements, in a non-

obvious combination. Being known, the elements

come within the “scope and content” of the prior art.

The unknown is whether combining those known

elements involved novel or innovative “differences”

that were not obvious to a person of skill at the time

of invention. Dann v. Johnston, 425 U.S. 219

(1976).

7

Petitioner would merge the “differences”

aspect with the “skill” aspect, into one inquiry about

whether the skill existed for persons to perceive

making the combination, before the time that the

combination actually was made.

The better approach is to require evidence that

shows a teaching, motivation or suggestion in the prior

art, explicit or implicit, because that evidence tends to

prove whether the inventive differences were obvious,

or not.

Eliminating a need for evidence about a

teaching, motivation or suggestion to make the

combination will reduce the obviousness inquiry to

a swearing match over how skilled, or how

innovative persons were, at the time of invention.2

3. AFFIRMANCE IS WARRANTED UNDER THE

STANDARD OF REVIEW APPROPRIATE TO RULE 56

RuLINGS, AS WELL AS, UNDER THE REVIEW

STANDARD APPLIED TO EQUITABLE DECREES.

Whenever a District Court makes inadequate

2 The comparative example is §102)(b) invalidity, where

corroboration is needed in addition to testimony about the

existence of the subject matter in the prior art. The Barbed Wire

Case, 143 U.S. 275 (1892). A proven teaching, motivation or

suggestion convincingly shows that the “differences,” between

the claimed combination and the uncombined elements in the

prior art, would have been “obvious at the time” of the invention.

8

findings, or if its §103(a) assessment is “incomplete,”

then a summary judgment of invalidity should not

stand. In every case, a summary judgment of

obviousness based on testimony, or a conclusion,

that proclaims ‘it looks obvious to me’ is neither a

clear, nor a convincing ground to invalidate a duly-

examined and issued patent. Here, the Circuit Court

should be affirmed based on the threshold review

standard of whether adequate findings or an adequate

record exists to grant a Rule 56 motion.

Many frustrations were expressed about the

Federal] Circuit’s jurisprudential role, by the

Petitioner and its amici. In the undersigned’s

opinion, many of these concerns are borne from the

multivariate standards used to review patent validity

decisions of district courts. The multi-tier appellate

review standards enable the Circuit Court to nullify,

or ignore, all of the work done in the district court to

determine obviousness.

Before undertaking any validity conclusion,

the initial issue of claim interpretation will undergo

de novo review. Then, the four Graham v. Deere

inquiries are reviewed for clear error. Next, the

conclusion about obviousness is reviewed de novo.

Add to that, in the present case, that a grant of sum-

mary judgment is reviewed de novo, and a denial of

summary judgment is reviewed for abuse of

discretion. Cross Med. Prods., Inc., v. Medtronic

Sofamor Danek, Inc., 424 F.3d 1293 (Fed. Cir. 2005).

There too are the necessarily included

appellate review standards for whether a reference

qualifies as prior art; for what bounds “the art to

which” the inventive subject matter pertains,” and for

“analogous” arts; and, the review standard applied to

what education and experience qualify a “person

having ordinary skill” in the art.

This multivariate approach to appellate review

should be supplanted, in recognition of obviousness

being an equitable inquiry, with the singular standard

of “reviewable on appeal for an abuse of discretion.”

eBay v. MercExchange, 547 U.S. ____, 126 S.Ct. 1837

(2006).

4. INVALIDATING A PATENT UPON A SHOWING OF

OBVIOUSNESS IS AN EQUITABLE REMEDY.

The Petitioner and several amici operate from

a premise that the obviousness inquiry traditionally

was decided in the law courts. This amicus questions

that. An invalidity challenge to a patent “is

equitable” in its origins. Tegal Corp. v. Tokyo

Electron America, Inc., 237 F.3d 1331 (Fed. Cir.

2001), and Jn re Technology Licensing, 423 F.3d

1286 (Fed. Cir. 2005). A challenge to the validity of

10

a duly issued patent seeks equitable relief in the form

of a declaratory judgment.

The statute, 35 U.S.C. §103(a), recites

equitable factors, not tangible evidence, which “as a

whole” suggest that an invention may have been obvi-

ous, and if so, that warrants a duly-issued patent being

declared invalid. These statutory factors require a

post-hoc assessment of “the prior art” viewed, as of

the “time the invention was made,” by a hypothetical

“person having ordinary skill in the art.” To posit

these evaluative factors against a “presumption of

validity,” to reach a clear and convincing conclusion

about whether to declare a patent invalid, is a pure

exercise in equitable jurisprudence.

Based on a historical test, or on the measure of

relief sought, an action to declare a patent invalid for

obviousness seeks an equitable remedy. The English

ancestor of a §103(a) claim is the writ of scire facias.

As summarized by Blackstone, “WHERE the crown

hath unadvifedly granted any thing by letters patent,

which ought not to be granted, ...the remedy to

repeal the patent is by writ of fcire facias in

chancery” Blackstone's Commentaries on the Laws

of England, Book III - Chapter 17. The writ of scire

facias enabled a citizen, who challenged an issued

patent based on prior art, to have it declared invalid

1}

by the Court of Chancery. Moreover, the modern

action for a declaration that a patented invention is

obvious seeks no monetary or legal relief.3 “The

distinguishing characteristics of legal remedies are

their uniformity, their unchangeableness or

fixedness, their lack of adaptation to circumstances,

and the technical rules which govern their use.” JOHN

N. PomMEROY, A Treatise on Equity Jurisprudence,

§109 (4th ed. 1918).

If the governing rules were to be changed,

based on the issues as presented here, then this

amicus respectfully suggests that change be that

obviousness determinations would be reviewed

according to the standard applied to equitable

rulings.

As applied to the present case, the Federal

Circuit ruling of inadequate findings or of an incom-

plete analysis in the lower court, would be affirmed,

based on standards that apply to review of summary

judgments under Rule 56. However, following

remand and full development of the record in the

3 Prior to 1819, the enabling statute vested federal

courts with power in patent suits heard at law. Act of

April 17, 1800 (2 Stat. 37). Then, that jurisdiction was

extended to equity actions. Act of February 19, 1819 (3

Stat. 481). Campbell v. City of Haverhill, 155 U.S. 610

(1895).

12

District Court, that lower court’s ruling on whether

the patent claims a non-obvious invention, if later

appealed, would be reviewed under the abuse of

discretion standard. Under either standard, a

conclusion based on inadequate findings would be

error, because Rule 56 requires more, or because in

equity that is an abuse of discretion.

The standard of review for equitable

determinations promotes a full development of the

record in the District Court, and provides more

predictability on appeal. The statute creating the

Federal Circuit Court of Appeals sought to assure

that all district courts would uniformly rule on patent

law issues. Those who counsel patentees, and

counsel their competitors, prefer that predictability

be the touchstone. Predictability in patent matters

derives from deliberative adjudication, based on

uniform principles, including a singular standard of

review. Otherwise predictability may be diffused by

widely-applied standards of appellate review.

5. PETITIONER AND AMICI PROPOSE CHANGES TO

PRECEDENT THAT REQUIRE LEGISLATIVE ACTION.

The merits brief of Petitioner, and its support-

ing amici, propose to eliminate provisions of the

Patent Act, and wholly to overrule precedent.

13

The Petitioner’s challenge to the factors set out

by the Federal Circuit can be assessed on several

levels. Petitioner argues that the suggestion,

motivation, or teaching to combine distinct

references should not be factored into the

obviousness analysis. Its arguments against any

single, ‘litmus test’ asks too much, or goes too far.

However, Petitioner perhaps argues that obviousness

may be proven, based on §103(a) as interpreted in

Graham vy. Deere, even when no explicit teaching,

motivation or suggestion to combine distinct

references can be shown. Now though, the Federal

Circuit caselaw permits alternative ways to show

motivation to combine. Cross Med. Prods., Inc.,

supra, or which collapses the inquiry into a measure

of the prior art “as a whole.” Jn re Napier, 55 F.3d

610 (Fed. Cir. 1995).

This essential point is variously stated by the

amici supporting the Petitioner. The brief of amici

AARP, etc., contends that the Federal Circuit

demands the patented combination to “be explicitly

suggested previously” in the prior art. The Solicitor

General refers to the “rigid test” (pg. 15) of the

Federal Circuit, which most recently referred to its

“non-rigid” test. Alza Corp. v. Mylan Labs, 2006 WL

2556356 (Fed. Cir. Sept. 9, 2006). Circuit precedent,

which admits proof of the inventive combination

14

having been taught or been suggested, explicitly or

implicitly, or having been motivated by the nature of

the problem, enables the lower courts to develop and

assess a full record that takes account of all the best

evidence of obviousness.

To eliminate consideration of all such evidence

is ill-advised, or is a change to the law that should

come from Congress.

_ & The amici law and history Professors

propose a ‘window’ of inventiveness open for a

“reasonable time” following the date of the claimed

invention, and to “shift the burden” to the patentee,

and to eliminate the “clear and convincing” standard

as to uncited prior art.

g Amici IBM proposes a “rebuttable presumption”

which may erode the legislative intent of §282.

These proposals may go beyond the

procedural status of the case at bar. Others propose

changes to the text or to the application of the Patent

Act that more properly are directed to Congress.

@ Petitioner would remove from consideration

evidence that distinguishes the §103 obviousness

standard from that for §102 anticipation. The “mere

existence of differences between the prior art and an

invention does not establish the invention’s

nonobviousness.” Dann, supra at 230. See, fn. 2, supra.

15

ug The suggestion of amici Intel and Micron is

a standard that allows patents for pioneering or “truly

novel” inventions, and denies patents for

“comparatively straightforward combinations.”

Those too are better cast as proposals for legislative

action, rather than for application of the existing

Statute.

Other amici in support of Petitioner are not in

agreement about the contours and application of

teaching, suggestion or motivation test.

g Amici Colianni expressed concern that

aspects of the test get an “incorrect emphasis”.

g The brief of amici Business Software

Alliance suggests that a more “flexible and

content-specific” inquiry should overlay the

teaching, suggestion or motivation test.

g Amici Professors Strandburg, et al, and

General Motors advocate that the focus move from

the §103(a) factor of “prior art” to consider the

provable “skill in the art” at the time of invention.

All this may do is have competing tral experts

testify that skilled person would deem a combination

obvious, where now the focus is on more empirical

evidence of what combinations actually were known,

shown, or suggested in the relevant prior art. These

amici proposals suggest that district judges, or the

litigants presenting the evidence, fail to give enough

16

regard to a showing of what a person of ordinary skill

would have known at the time of invention.

g Petitioner and various amici are troubled

that an accused infringer might encounter difficulty

in obtaining a summary judgment of obviousness.

That, perhaps, results from the clear and convincing

standard of proof, rather than the precise issue at bar.

These proposals expand on the question

presented here, or suggest legislative action on the

Patent Act to remedy various concerns.

In conclusion, the undersigned amicus

respectfully submits that evidence, explicit or

implicit, that proves the existence or absence of a

teaching, suggestion or motivation to combine the

prior art should remain a factor essential to the

obviousness inquiry. The test is workable, and has

served the patenting regime well, for years. If a

change is needed, then thought should be given to

having obviousness determinations, based on a

complete record, be reviewed under the equitable

standard of an abuse of discretion.

“Knowledge after the event is always

easy, and problems once solved present no

difficulties, indeed, may be represented as

never having had any, and expert witnesses

may be brought forward to show that the

17

new thing which seemed to have eluded the

search of the world was always ready at

hand and easy to be seen by a merely

skillful attention. “But the law has other

tests of the invention that subtle conjectures

of what might have been seen and yet was

not.” Diamond Rubber Co. v. Consolidated

Rubber Tire Co., 220 U.S. 428, 435 (1911).

Obviousness should include evidence of any

teaching, motivation or suggestion to combine

elements, because that proves what might have been

combined, and “yet was not.”

CONCLUSION.

Adequate consideration of evidence, or a lack

of evidence, as to whether a teaching, motivation or

suggestion to combine previously known elements

existed as of the time of invention is fully in accord

with the text of §103(a), and with the equitable deter-

mination required to invalidate a patent as obvious.

For these reasons, the ruling of the Federal

Circuit Cout of Appeals should be affirmed.

18

Dated: Sept. 25, 2006

Respectully submitted,

Let THOMASON

SPALDING & THOMASON

106 North 4th St.

Bardstown, KY 40004

(502) 349-7227

Amicus Curiae and Counsel