A Correction on Patent Law

by on January 22, 2007 · 14 comments

Lawrence Ebert says that my American article didn’t quite get the Federal Circuit’s obviousness test right:

Of the “specific documentation” point, Lee wrote: “[The CAFC] held that when a patent covers the combination of two elements, it can be declared obvious only if someone can produce another patent, an academic paper, or other formal documentation that pre-dated the patent application and had a specific ‘teaching, suggestion, or motivation’ to combine the elements in the manner described.” Lee is wrong in stating that specific documentation must be found. In the CAFC case of In re Kotzab, decided in the year 2000 long before KSR v. Teleflex, the CAFC wrote: “the teaching, motivation, or suggestion may be implicit from the prior art as a whole. rather than expressly stated in the references… In re Kotzab, 217 F.3d 1365, 1370 (CAFC 2000)”

I stand corrected. Mr. Ebert has a JD and I do not, and he doubtless knows this area of the law much better than I do. In my defense, however, I think I’m in good company: in oral arguments, the Supreme Court justices seemed pretty confused by the Federal Circuit’s precedents themselves. If Justice Breyer finds the TSM test confusing, I don’t feel too bad about getting it wrong myself.

In any event, I appreciate Mr. Ebert’s taking he time to point this out.

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About Tim Lee

Timothy B. Lee (Contributor, 2004-2009) is an adjunct scholar at the Cato Institute. He is currently a PhD student and a member of the Center for Information Technology Policy at Princeton University. He contributes regularly to a variety of online publications, including Ars Technica, Techdirt, Cato @ Liberty, and The Angry Blog. He has been a Mac bigot since 1984, a Unix, vi, and Perl bigot since 1998, and a sworn enemy of HTML-formatted email for as long as certain companies have thought that was a good idea. You can reach him by email at leex1008@umn.edu.

Read more articles by Tim Lee.

  • http://weblog.ipcentral.info/ Noel Le

    A couple other tidbit, on top of feedback I’ve already given you.

    1) I still get the sense Tim, that when you talk about obviousness in your article, that you’re either using the dictionary definition, or your own sense of obvioussness. Thats fine, but it does not add clarity when discussing a legal standard of obviousness.

    Also, I’m not sure if the SCOTUS stated they were confused by the TSM test as much as the justifications for it. If you meant something else, then please clarify.

    2)its Don Stout, not David Stout. Further, I don’t believe NTP is headed by Stout, although he previously worked for the firm, and currently serves as outside counsel.

    3)you imply that NTP is not an innovator. Well, it currently has no products on the market, but its wrong to imply that NTP did not invest in R&D and attempt to create products. NTP previously worked with firms like AT&T on push-mail technology, as early as 1990.

    4)I find it a bit amusing that you defend Apple and Microsoft as victims of the patent system in the closing of your article, despite tirelessly blasting them for stifling competition and innovation b/c they patent their R&D.

  • http://weblog.ipcentral.info/ Noel Le

    A couple other tidbit, on top of feedback I’ve already given you.

    1) I still get the sense Tim, that when you talk about obviousness in your article, that you’re either using the dictionary definition, or your own sense of obvioussness. Thats fine, but it does not add clarity when discussing a legal standard of obviousness.

    Also, I’m not sure if the SCOTUS stated they were confused by the TSM test as much as the justifications for it. If you meant something else, then please clarify.

    2)its Don Stout, not David Stout. Further, I don’t believe NTP is headed by Stout, although he previously worked for the firm, and currently serves as outside counsel.

    3)you imply that NTP is not an innovator. Well, it currently has no products on the market, but its wrong to imply that NTP did not invest in R&D; and attempt to create products. NTP previously worked with firms like AT&T; on push-mail technology, as early as 1990.

    4)I find it a bit amusing that you defend Apple and Microsoft as victims of the patent system in the closing of your article, despite tirelessly blasting them for stifling competition and innovation b/c they patent their R&D.;

  • http://www.techliberation.com Tim Lee

    I’m not sure if the SCOTUS stated they were confused by the TSM test as much as the justifications for it. If you meant something else, then please clarify.

    I was specifically thinking about Justice Breyer’s confusion regarding the meaning of the term “motivation” in the TSM test.

    And of course I wasn’t using the federal circuit’s definition of obviousness. The whole point of the article was that the Supreme Court should reject the Federal Circuit’s absurdly narrow definition of the term.

    Thanks for the correction concerning Mr. Stout.

    And I’m baffled by your amusement regarding Apple and Microsoft. The world is not populated by Good Guys and Bad Guys. I criticize Apple and Microsoft when they do bad things, and I defend them when they’re the victims of bad policies. There’s absolutely nothing contradictory about that.

  • http://www.techliberation.com Tim Lee

    I’m not sure if the SCOTUS stated they were confused by the TSM test as much as the justifications for it. If you meant something else, then please clarify.

    I was specifically thinking about Justice Breyer’s confusion regarding the meaning of the term “motivation” in the TSM test.

    And of course I wasn’t using the federal circuit’s definition of obviousness. The whole point of the article was that the Supreme Court should reject the Federal Circuit’s absurdly narrow definition of the term.

    Thanks for the correction concerning Mr. Stout.

    And I’m baffled by your amusement regarding Apple and Microsoft. The world is not populated by Good Guys and Bad Guys. I criticize Apple and Microsoft when they do bad things, and I defend them when they’re the victims of bad policies. There’s absolutely nothing contradictory about that.

  • http://www.techliberation.com Tim Lee

    I’m not sure if the SCOTUS stated they were confused by the TSM test as much as the justifications for it. If you meant something else, then please clarify.

    I was specifically thinking about Justice Breyer’s confusion regarding the meaning of the term “motivation” in the TSM test.

    And of course I wasn’t using the federal circuit’s definition of obviousness. The whole point of the article was that the Supreme Court should reject the Federal Circuit’s absurdly narrow definition of the term.

    Thanks for the correction concerning Mr. Stout.

    And I’m baffled by your amusement regarding Apple and Microsoft. The world is not populated by Good Guys and Bad Guys. I criticize Apple and Microsoft when they do bad things, and I defend them when they’re the victims of bad policies. There’s absolutely nothing contradictory about that.

  • http://www.techliberation.com Tim Lee

    I’m not sure if the SCOTUS stated they were confused by the TSM test as much as the justifications for it. If you meant something else, then please clarify.

    I was specifically thinking about Justice Breyer’s confusion regarding the meaning of the term “motivation” in the TSM test.

    And of course I wasn’t using the federal circuit’s definition of obviousness. The whole point of the article was that the Supreme Court should reject the Federal Circuit’s absurdly narrow definition of the term.

    Thanks for the correction concerning Mr. Stout.

    And I’m baffled by your amusement regarding Apple and Microsoft. The world is not populated by Good Guys and Bad Guys. I criticize Apple and Microsoft when they do bad things, and I defend them when they’re the victims of bad policies. There’s absolutely nothing contradictory about that.

  • http://weblog.ipcentral.info/ Noel Le

    I was actually complimenting you about your comments on Apple and Microsoft. You gotta admit Tim, you do have a field day with these firms quite often:)

  • http://weblog.ipcentral.info/ Noel Le

    I was actually complimenting you about your comments on Apple and Microsoft. You gotta admit Tim, you do have a field day with these firms quite often:)

  • Lawrence B. Ebert

    Thanks for the post. Without reaching into the nuances of patent law, the CAFC decision in KSR (which significantly is NONPRECEDENTIAL) relied on, and EXPLICITLY cited, In re Kotzab, so any “confusion” regarding the LACK of a requirement for a specific document to show motivation would have to be an intentional confusion. Another point worth noting is that the Federal Circuit didn’t say the invention wasn’t obvious; they merely said that there was no showing of motivation (i.e., there was a lack of evidence; not that there might not be evidence). For the requirement of motivation, the Federal Circuit cited In re Kotzab, which is the precedential case at issue (although certainly not the first case requiring motivation).

  • Lawrence B. Ebert

    Thanks for the post. Without reaching into the nuances of patent law, the CAFC decision in KSR (which significantly is NONPRECEDENTIAL) relied on, and EXPLICITLY cited, In re Kotzab, so any “confusion” regarding the LACK of a requirement for a specific document to show motivation would have to be an intentional confusion. Another point worth noting is that the Federal Circuit didn’t say the invention wasn’t obvious; they merely said that there was no showing of motivation (i.e., there was a lack of evidence; not that there might not be evidence). For the requirement of motivation, the Federal Circuit cited In re Kotzab, which is the precedential case at issue (although certainly not the first case requiring motivation).

  • Lawrence B. Ebert

    As a followup, for a different “conservative” view on the case.

    1. A district court is required by law to follow the precedent of the relevant appellate court, here the Court of Appeals for the Federal Circuit.

    2. Here, the district court didn’t bother to write down any reason that one of ordinary skill would combine the two parts of the combination invention as claimed by the patentee.

    3. In not writing down any reason, the district court violated controlling precedent, as expressed for example in In re Kotzab.

    4. As a separate matter, the Kotzab case states that motivation may be implicit in the prior art as a whole, rather than having to be found in one particular document. Thus, the burden of finding “something” to write down was not high.

    5. The Federal Circuit sent the case back to the district court, to write something down. The Federal Circuit did not say that the invention wasn’t obvious. They said the district court didn’t follow the law.

    6. Talking about “how obvious” the invention at issue may be is interesting, but irrelevant to what happened here, as there was no ruling that the invention wasn’t obvious. The district court flaunted controlling precedent, which it is not at liberty to do. The Supreme Court has the power to change the precedent of the Federal Circuit, but the district court does not.

    Although the question of whether or not the invention in the KSR case is obvious was NOT at issue before the Federal Circuit, one notes that the Federal Circuit has to fashion law that applies to a variety of cases. Thinking about a different case is instructive. Right now, three of the Thomson (WARF) patents on human stem cells are being challenged. The challengers say that Thomson merely followed a “recipe” that had been created for mouse stem cells. Years and years passed between the time of the mouse recipe and the isolation of a human stem cells. Obvious?

    Of “obviousness” in the scientific realm, the journal Science published two papers in the area of SCNT to create human embryonic stem cells. The reviewers and editors passed judgment that the submitted manuscripts were entirely plausible, based on scientific principles. They weren’t. Significantly, one year has passed since the fraud was uncovered, and not one lab in the whole world has been able to duplicate the results of the first paper, much less the second paper. Was the considered judgment of the scientific community “obviously” wrong?

    Finally, it is ironic to note that the opinions on patents of the conservative community of 2007 bear a striking resemblance to the opinions of two liberal icons, Black and Douglas, as they were expressed for example in the Graver Tank case back in 1950.

    Lawrence B. Ebert January 23, 2007

  • Lawrence B. Ebert

    As a followup, for a different “conservative” view on the case.

    #1. A district court is required by law to follow the precedent of the relevant appellate court, here the Court of Appeals for the Federal Circuit.

    #2. Here, the district court didn’t bother to write down any reason that one of ordinary skill would combine the two parts of the combination invention as claimed by the patentee.

    #3. In not writing down any reason, the district court violated controlling precedent, as expressed for example in In re Kotzab.

    #4. As a separate matter, the Kotzab case states that motivation may be implicit in the prior art as a whole, rather than having to be found in one particular document. Thus, the burden of finding “something” to write down was not high.

    #5. The Federal Circuit sent the case back to the district court, to write something down. The Federal Circuit did not say that the invention wasn’t obvious. They said the district court didn’t follow the law.

    #6. Talking about “how obvious” the invention at issue may be is interesting, but irrelevant to what happened here, as there was no ruling that the invention wasn’t obvious. The district court flaunted controlling precedent, which it is not at liberty to do. The Supreme Court has the power to change the precedent of the Federal Circuit, but the district court does not.


    Although the question of whether or not the invention in the KSR case is obvious was NOT at issue before the Federal Circuit, one notes that the Federal Circuit has to fashion law that applies to a variety of cases. Thinking about a different case is instructive. Right now, three of the Thomson (WARF) patents on human stem cells are being challenged. The challengers say that Thomson merely followed a “recipe” that had been created for mouse stem cells. Years and years passed between the time of the mouse recipe and the isolation of a human stem cells. Obvious?

    Of “obviousness” in the scientific realm, the journal Science published two papers in the area of SCNT to create human embryonic stem cells. The reviewers and editors passed judgment that the submitted manuscripts were entirely plausible, based on scientific principles. They weren’t. Significantly, one year has passed since the fraud was uncovered, and not one lab in the whole world has been able to duplicate the results of the first paper, much less the second paper. Was the considered judgment of the scientific community “obviously” wrong?


    Finally, it is ironic to note that the opinions on patents of the conservative community of 2007 bear a striking resemblance to the opinions of two liberal icons, Black and Douglas, as they were expressed for example in the Graver Tank case back in 1950.

    Lawrence B. Ebert
    January 23, 2007

  • Lawrence B. Ebert

    Of the text –The whole point of the article was that the Supreme Court should reject the Federal Circuit’s absurdly narrow definition of the term.–, the Federal Circuit’s approach to obviousness is roughly in two parts:

    1. Gather references that illustrate each part of the claim (i.e., show that there is prior art teaching each claim element; meaning that there is structural similarity between the alleged invention and old work)

    2. Show that there is a reason to combine the many references to reach the invention of the claim. That is, just because A, B, and C all existed before the invention doesn’t mean that the invention (A + B + C) existed.

    To give a simple example, the invention of the Wright Brothers pertained to three-dimensional control of flight (not to powered flight, as some believe). Control of two dimensions was well-known before the Wrights, and, ailerons, an element that could control the third dimension (analogously to the wing warping of the Wrights) was also known before the Wrights. A, B, and C were all known. Did that make (A + B + C) obvious? Is the Federal Circuit’s definition “absurdly narrow”? If so, propose a new one, rather than hiding with the confusion of the justices.

    As a minor aside, the Wright’s patent application, written by the Wrights, was filed months before the date of powered flight in December 1903. Relevant to the remark above about patent lawyers, the patent lawyer who later came on board (and who would be used by the Wrights at all later times and who recently was honored with a statue) altered the application in ways which delayed issuance. Not being a patent lawyer is no barrier to understanding patent law. And spending too much time with patent lawyers can be hazardous, as Wilbur learned.

    Separately, on the “tools belong to the man who can use them” concept:

    http://www.ipfrontline.com/depts/article.asp?id=14024&deptid=4

    Lawrence B. Ebert January 23, 2007

  • Lawrence B. Ebert

    Of the text –The whole point of the article was that the Supreme Court should reject the Federal Circuit’s absurdly narrow definition of the term.–, the Federal Circuit’s approach to obviousness is roughly in two parts:

    #1. Gather references that illustrate each part of the claim (i.e., show that there is prior art teaching each claim element; meaning that there is structural similarity between the alleged invention and old work)

    #2. Show that there is a reason to combine the many references to reach the invention of the claim. That is, just because A, B, and C all existed before the invention doesn’t mean that the invention (A + B + C) existed.

    To give a simple example, the invention of the Wright Brothers pertained to three-dimensional control of flight (not to powered flight, as some believe). Control of two dimensions was well-known before the Wrights, and, ailerons, an element that could control the third dimension (analogously to the wing warping of the Wrights) was also known before the Wrights. A, B, and C were all known. Did that make (A + B + C) obvious? Is the Federal Circuit’s definition “absurdly narrow”? If so, propose a new one, rather than hiding with the confusion of the justices.

    As a minor aside, the Wright’s patent application, written by the Wrights, was filed months before the date of powered flight in December 1903. Relevant to the remark above about patent lawyers, the patent lawyer who later came on board (and who would be used by the Wrights at all later times and who recently was honored with a statue) altered the application in ways which delayed issuance. Not being a patent lawyer is no barrier to understanding patent law. And spending too much time with patent lawyers can be hazardous, as Wilbur learned.

    Separately, on the “tools belong to the man who can use them” concept:

    http://www.ipfrontline.com/depts/article.asp?id…

    Lawrence B. Ebert
    January 23, 2007

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