Expert analysis: How KSR v. Teleflex should change your patent strategies

By Jay Sandvos, Bromberg & Sunstein LLP -- Electronic Business, 5/16/2007

In the recent case of KSR v. Teleflex, the U.S. Supreme Court has redefined the standard of what is too obvious to patent. Patent attorneys will soon be responding with some new strategies. Let’s take a look at what to expect.

KSR is good news for those innocent waifs being victimized by thuggy patent trolls, which is to say innocent big corporations fending off the patent claims of nasty individual inventors. As an alternative to the courts, the U.S. Patent Office has long provided its own reexamination procedure to address questions of patent validity. But reexamination has been little used, perhaps due to a perception that the formal process seemed too favorable to patent owners. No more. Now reexamination looks much more attractive to potential challengers and seems like a faster, cheaper, and more certain way to dispose of a troublesome patent than litigation in the courts.

The KSR decision also makes it much easier for the Patent Office to reject claims as obvious just by adding together pieces of different prior-art references to resemble the claims. In the past, such a mental exercise had to be supported by a difficult analysis demonstrating that someone in the same field tackling the same problem could have combined the prior art to make what the patent claims. That difficult analysis is no longer required after KSR. Now it is enough if a person in the field might have combined the teachings of the prior art for any reason at all. That is a big change, and the new test will be much easier to meet.

With this new obviousness ammunition, some of the other advantages of reexamination look more interesting too. For example, one problem with challenging a patent in court is that the patent is initially presumed to be valid. For a patent to be invalidated as obvious, that presumption has to be overcome in court by a heavy weight of “clear and convincing” evidence to the contrary. But in a reexamination at the Patent Office, there is no such presumption. A patent examiner only needs to articulate a prima facie argument that the challenged patent claim seems obvious. That shifts the burden onto the patent owner to convincingly argue to the contrary.

In addition, the judge and jury in a court case are complete novices where the technology of the patent at hand is concerned. And juries are also unfamiliar with legal concepts generally, whereas individual trial judges vary widely in their experience and skill in handling the unique legal issues arising in patent law. By contrast, the examiners at the Patent Office are relatively knowledgeable about the technology of the patent and are also familiar with the legal niceties of patent validity. Where an obviousness challenge in court is often characterized as a roll of the dice, one would expect the Patent Office to understand a genuine and well-supported obviousness argument and act appropriately.

For those reasons, we should be seeing a lot more patents being invalidated by reexamination at the Patent Office. That is good news for the potential targets of those patents, who now will be assembling packages of relevant prior art for submission to the Patent Office, along with corresponding arguments explaining why the challenged patent claims are obvious from that art.

To avoid those potentially deadly arguments, some patent owners will be asking for reexamination on their own. They will seek to uncover and submit the most relevant prior art and then argue why their claims are not obvious and patentable. Doing this themselves, patent owners may not have to overcome the potentially crippling counterarguments a competitor might make against them. If the patent claims survive and reemerge from the reexamination, they will be stronger than ever and far harder to invalidate later.

Jay Sandvos is a partner with Bromberg & Sunstein LLP, a Boston law firm focusing on intellectual property and business litigation.