A Powerful Voice in Patent Disputes

By Charles Lane
Monday, November 6, 2006

When it comes to patent law, who is the ultimate authority? Is it the Supreme Court? Or the U.S. Court of Appeals for the Federal Circuit, the specialty court for patent and trademark law established by Congress in 1982?

Actually, it's none of the above. But before I reveal the correct answer, let me congratulate you for having read this far beyond the words "patent law." This eye-glazing technical topic has been known to send even people who like tax law screaming from the room. That you may still be interested shows a commendable understanding of patent law's significance, notwithstanding its arcane nature.

After all, the Founding Fathers didn't think patents were boring. They recognized that secure intellectual property would be a pillar of the national economy they hoped to create. Thus, the Constitution, "to promote the progress of science and the useful arts," specified the legal recognition of patents and copyrights as an exclusive function of the federal government.

Making sure that patent rights are strong enough so that inventors have incentives to innovate, but not so strong that they create inappropriate monopolies on widely applicable technology, is a legal balancing act that determines the flow of billions of dollars each year. Just ask corporate giants such as Microsoft, AT&T or eBay, whose names appear on the list of litigants in recent Supreme Court patent cases.

Abortion, affirmative action and the death penalty grab headlines. But when it comes to impact on the jobs and consumer choices available to everyday Americans, patent law probably matters more.

End of lecture. Now back to the mini-quiz. Arguably, the real power in patent law these days is not a court at all, but the Office of the Solicitor General, the Justice Department lawyer who represents the federal government before the Supreme Court. In the 10 Supreme Court patent cases in which the solicitor general has participated since 1995, the SG is undefeated, according to a recent study by Jonathan Franklin, a Supreme Court specialist at the law firm of Fulbright & Jaworski.

What's behind the court's deference to the executive branch? In part, say patent law specialists, it appears that the justices are increasingly second-guessing the rulings of the Federal Circuit, which was designed to help clean up patent law by concentrating all federal appeals in a single expert body. From the Federal Circuit's inception until the mid-'90s, the justices seemed content to let it call the shots. But as the information technology revolution has spread, the high court has shown a willingness to review decisions of the Federal Circuit, whose critics say it is too favorable to patent holders.

None of the justices are experts on patent law. Thus, they lean heavily on the expertise of the solicitor general, who receives plenty of input from the U.S. Patent and Trademark Office, the Federal Trade Commission and others within the executive branch.

"In many areas of law that are highly technical, the court looks to the government to help find its way," said John F. Duffy, professor of patent law at George Washington University. "The Supreme Court is not leading. It is choosing between two specialists: the PTO and the Federal Circuit."

Duffy notes that patent cases account for about a fifth of the 10 to 20 appeals per year in which the court asks for the views of the solicitor general before it decides whether or not to hear the case.

The justices have agreed to hear three patent cases this year. The most significant may be KSR International v. Teleflex , No. 04-1350, scheduled for argument on Nov. 28. At issue is the proper meaning of "obvious" in patent law. You can only patent something if it's really an original invention. It can't be something so obvious that anyone could have slapped it together. The question, though, is how obvious that is.

KSR makes gas pedals for General Motors and other car manufacturers. Its accelerators are adjustable, so they can be made higher or lower depending on how long the driver's legs are, and are linked to an electronic sensor that modern cars use to control the throttle, instead of a cable as in the old days. Teleflex, represented by Supreme Court specialist Thomas C. Goldstein, says KSR is infringing its patent on this combination; KSR says, in essence, that it is simply building something anyone familiar with the technologies could have made. A federal district judge sided with KSR, but the Federal Circuit reversed that decision and said Teleflex's device was non-obvious, and thus patentable.

To Duffy, who represents KSR in the Supreme Court, the Federal Circuit's ruling has no basis in the text of the relevant patent statute and is typical, he says, of how "junky patents are clogging up the system." Teleflex's brief responds that its device is "new and previously unforeseen" and that the Federal Circuit applied a "flexible" standard of obviousness in concluding that the company was entitled to a trial on its claim of infringement.

The court's decision will not only determine this critical point of patent law doctrine, it could also affect how much car and truck buyers have to pay for vehicles with adjustable accelerator gizmos, which, among other uses, help short people drive big rigs. If you think that's not a big deal, many folks disagree with you: Some 37 different friend-of-the-court briefs have been filed on behalf of one side or the other -- three more than have been filed in the blockbuster case on the federal partial birth abortion ban, which will be heard on Wednesday.

Of course, if Franklin's analysis holds, the brief that matters most is the solicitor general's, filed on KSR's side. Obviously, there's a lot more to patent law than you thought.

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