Thursday, November 30, 2006
Posted by Alan Childress
Over at Legal Ethics Forum, Davids McGowan and Hricik are asking (here and here) about the ethics, or at least unusualness, of Federal Circuit opinions on "obviousness" that read more like detailed amicus supplication to the Supreme Court while it is considering the unpublished Federal Circuit ruling in KSR Int'l v. Teleflex. Now the case has been argued, and it appears from yesterday's Legal Times story (per Law.com here) that perhaps the Justices are not taking the hint from the erstwhile amicus opinions. Several Justices expressed hostility to and confusion about its obviousness test (showing no appeasement from later clarifications in the lower court). So much so that the story reports a phone interview with the court's Chief Judge later--also an unusual public defense if you will, though he emphasized he was not responding to any particular Justice's comments.
Reminds me of a story about the late, very great Fifth Circuit Judge Reynaldo Garza, who appeared openly frustrated at an en banc argument in which counsel was butchering the job of defending a panel opinion Judge Garza had written. Judge Garza kept interrupting so much from the bench to toss softballs, and fix the argument, that other judges seemed annoyed. Litigants in that beautiful courtroom in the John Minor Wisdom Courthouse to this day swear they heard Judge Garza's distinctive voice directed in exasperation to another judge: "But, but...he's losing my case for us."
Perhaps it is time for the Federal Circuit to let the litigants (well represented here by, for example, Thomas Goldstein), industry groups and the patent bar (several filed as amicus), and able law professors (noted in Hricik's post and link, including my former colleague Chris Cotropia) all address these kinds of issues to the Supreme Court and defend circuit law. And especially be the ones to speak to the press after the cases are heard. Not that there is necessarily a "violation" of anything, even an elusive "appearance of impropriety," in what transpired here. I am only saying it ultimately just isn't their place. It's not their case.
Nonetheless, there is no truth to the rumor that Justice Scalia appeared ready to rule that a patent is valid only if it is obvious, given that "patent" and "obvious" are literally and unambiguously synonyms. Nor was Justice Kennedy prepared to say that an obvious patent cannot be executed, based on international norms of customary law.
The most obvious test for obviousness that the Court should tell the Patent Office to use? "I know it when I see it."