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Summary Judgment after KSR
In its recent decision in KSR Int'l Co. v. Teleflex, Inc., the Supreme Court embraced a legal standard for obviousness that is in principle identical to the one the federal circuit currently uses. See The Supreme Court and the Modern Obviousness Standard. However, a little discussed aspect of the case may have significant repercussions for patent litigants. In particular, the decision may, for some period of time, have created a litigation topography more favorable to summary judgment.
Research examining federal circuit obviousness jurisprudence has demonstrated that over the last fifteen years the federal circuit was very likely to affirm the judgment of a trial court on the question of whether claims in suit are obvious if there was a trial. Between 1990 and 2005, the Federal Circuit affirmed such decisions between 75- and 81-percent of the time. See The Federal Circuit and Patentability: An Empirical Assessment of the Law of Obviousness, 85 Tex. L. Rev. __ (2007). Thus, a victory at trial most likely meant a victory on appeal.
The same was not true, however, when the decision being reviewed was a summary judgment. The following Figure depicts a ten-case lagged average of federal circuit opinions addressing summary judgments on the question of obviousness for fifteen years.
See The Federal Circuit and Patentability, Figure 3. While the court rejected over 60-percent of summary judgments the more remarkable discovery is the trend in federal circuit decisionmaking. As the Figure reveals, the federal circuit developed an obviousness jurisprudence increasingly likely to reject, i.e., reverse or vacate, an appeal from summary judgment.
This statistically significant trend may reveal that the federal circuit developed an obviousness jurisprudence that is increasingly dependent on underlying technological facts and is overlaid with an ever thinning legal inquiry. The most direct case for such a change has only two elements (1) the prominence of the Supreme Court’s Graham v. John Deere Co., 383 U.S. 1 (1966), opinion—and its guidance to consider a number of broad factors when considering the question of obviousness—in the federal circuit’s jurisprudence and (2) the development of the principle that claims are obvious when information, knowledge, and skill in an art provide a teaching, suggestion, or motivation to extend prior art subject matter in the manner claimed.
Under federal circuit law both of these elements are seen as factual in nature even though facts associated with either could influence the ultimate conclusion reached in an obviousness determination. Thus, if generally speaking, obviousness cases that reach the federal circuit are complicated and technologically complex then generating disputes over material facts may not be too difficult for skilled counsel. In addition, assuming that an express textual teaching to combine or extend prior art subject matter is a rare event, the search in a litigation for information concerning the relevant scope, content, knowledge, and skill in an art is likely to involve a contest between experts. Finally, there is the ultimate question itself. Determining whether an advance would have been obvious to a person having ordinary skill in the art at the time it was made is a case specific question that requires the digestion and comprehension of what is often abstract, complicated, and highly technical material. Hardly the stuff of easy, low-cost decisionmaking.
The appeal the Court heard in KSR was an appeal from a federal circuit decision that would have sent a summary judgment back to a trial court for further fact finding. But after embracing the federal circuit’s jurisprudence, a funny thing happened: the Supreme Court summarily invalidated the claim in suit as obvious—an approach generally inconsistent with federal circuit jurisprudence. So what, if anything, does KSR portend for the trend depicted above?
At the outset it should be noted that there may be a number of explanations for why the Court summarily invalidated the claim in suit. And not all of them suggest that there will be any change in the frequency with which the federal circuit rejects summary judgment. For example, perhaps the record in the case was such that it easily allowed for the conclusion that the claim in suit was obvious without a robust examination of the facts. Another explanation may be that the Supreme Court was trying to signal something to the federal circuit. As noted in The Supreme Court and the Modern Obviousness Standard, by summarily invalidating the claim in suit the Court does give emphasis to its guidance that a decisionmaker needs to be flexible in its approach to an obviousness determination and maintain a liberal view of the sources of information and teachings that inform the analysis.
However, another thing the Court may have been signaling in KSR—similar to its famous footnote 8 in Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 520 U.S. 17 (1997)—is that the Federal Circuit should find a way to make obviousness determinations more susceptible to summary judgment. One way to read the approach taken in the Supreme Court’s decision is that it is an attempt to reinvigorate the legal component of the obviousness analysis while simultaneously deemphasizing the significance of the facts in any given case.
In effect, by summarily invalidating the claim in the case without a rigorous testing of the facts, and by reminding the federal circuit to be sure to maintain a liberal and flexible approach to understanding and applying prior art information, the Supreme Court may be telling the federal circuit to make obviousness determinations less fact sensitive and therefore less costly (in a particular case) to adjudicate. If so, the approach is somewhat perverse in that it uses de novo review of the legal question to make mask a more superficial review of the technological facts that should inform an obviousness analysis. However, while reducing the significance of the facts to an obviousness analysis might make adjudication less accurate on the whole, it should also be expected to make the issue more frequently amenable to disposition on summary judgment.
Thus, the KSR opinion may reflect an attempt by the Supreme Court to slightly readjust a balance in the patent system, trading a degree of precision and fairness for a degree of ease in adjudication by making the obviousness inquiry slightly less searching and rigorous than it was before.
Ultimately, whether one consequence of the KSR opinion is an increased frequency of acceptance of summary judgment on the question of obviousness by the federal circuit remains to be seen. But given the high rate at which the federal circuit currently rejects summary judgment on the issue, odds are that it may have an affect—either by emboldening district court judges, or by reducing the strictness of the review applied by the federal circuit. As always, fedcir.org will be watching.
Posted by at May 22, 2007 2:46 PM in News & Commentary, Obviousness, Project Updates, Recent Cases | Permalink
