What’s the Question in KSR v. Teleflex?

Not what’s the legal issue, and not what are the questions the Supreme Court is reviewing in KSR v. Teleflex. Instead: What’s really at stake? My answer: the skilled artisan.

Read the exchange between Polk Wagner (Penn) and Kathy Strandburg (DePaul) now online at PENNumbra. As I read these pieces, and as I’ve read a little of the briefing on both sides, what strikes me is that opponents of the teaching/suggestion/motivation (TSM) standard for nonobviousness are using their argument to plead for reviving a meaningful investigation of the skilled artisan in patent cases. TSM is a stalking horse for something else. PHOSITA has gone missing, you might say, and they want PHOSITA to return.

More below the break.

On the other hand, if that’s right (and generally I’m sympathetic to the argument), then the “retain TSM” argument may turn out to have more force — or, perhaps, it should turn out to have more force — so long as the case stays focused on the rule itself. Whether the Supreme Court will agree is anyone’s guess.

Polk writes that if there is a problem with “too many patents” or “too many poor patents,” TSM is neither the cause, nor fixing it a cure:

[T]the array of sources from which a TSM may be found belies the argument that insignificant inventions are being patented as a result of the doctrine. It is certainly true that many patents are granted improvidently–and often because the most relevant prior art material is not in front of the decision maker–but these problems are inherent in any backward-looking technological inquiry, not limited to the TSM analysis. Put another way, eliminating the TSM doctrine is unlikely to have a significant effect on the level of patentability. . . .

Indeed, all that we can be certain of is that the elimination or curtailment of the TSM analysis will lead to an inquiry under Section 103 that is far less predictable, far more costly and unsettled, and increasingly subject to the subjective hindsight of non-technical judges–case-by-case decisions on patentability will become the province of the Federal Circuit rather than a focus of technological inquiry. This adventure in judicial patent reform is precisely the wrong approach to take in an age where the uncertainty and expense surrounding patents causes real harm to society.

As I read the argument, and as to the principle involved, Kathy more or less agrees:

A TSM inquiry could provide a “first cut” to weed out the most obvious claims. Since the TSM inquiry would no longer bear the brunt of the obviousness determination, it would not have to be stretched beyond its reasonable meaning, but could focus on what the prior art itself suggests about combining references. Beyond such a “first cut,” Graham provides a workable structure for the obviousness analysis. The analysis should encompass a robust inquiry into the PHOSITA’s skills, the tools used in the field, and the kinds of experiments performed and problems solved as a matter of course. The Federal Circuit should continue the task it abandoned after TSM took center stage and develop a structure for determining the level of skill in the art. Unlike the search for a suggestion to combine particular prior art references, defining the level of skill in a particular art is a recurring question about which the PTO could develop reusable expertise. A focus on the baseline innovative activity in a particular field provides for consistency while at the same time being sensitive to differences between practices in different fields. Expertise as to the level of routine problem solving could then inform the legal determination of what degree of effort in coming up with a particular combination renders that combination obvious.

Where the two arguments diverge is in their readings of the evidence: How does TSM work today, and does TSM make a difference? How do examiners behave? What has the Federal Circuit actually done in Section 103 cases? The “retain TSM” argument loses some steam if the evidence shows that TSM has, in fact, restricted the role of the skilled artisan.

For all of the supposed precision of a field linked to science and technology, there is a surprising (to me) lack of consensus on this point.

OK. Well, I’m not so surprised, really. But if the evidence is tied, though, the win may go, as it often does, to the party without the burden of proof.