Arti Rai IP supremo from Duke University is guest blogging at Balkanization and has been commenting on the recent US Supreme Court patent case decisions KSR v Teleflex and Microsoft v AT&T.
"More so than other lawyers, patent lawyers believe that legal decision making can and should be made as rule-like as possible, with all of the attendant predictability that allegedly comes with rules. Indeed, patent lawyers’ convergence around the mantra of predictability led to the creation several decades ago of the Federal Circuit. The hope was that this specialized patent court would enunciate crystalline rules that could be applied precisely in many, if not most, circumstances.
As any scholar of the rule/standards debate knows, however, rules may lead to socially undesirable results. For example, the requirement of a written “suggestion to combine” meant that trivial combinations could be patented simply because no one had bothered to suggest the obvious combination in writing. Additionally, ostensibly crystalline formulations (e.g. injunctions to focus on the “plain meaning” of words in construing documents) may leave much room for interpretation and discretion. The algorithms created from time to time by the Federal Circuit to guide the lower courts in determining the meaning of words in patent claims don’t appear to have yielded much predictability. In fact, a favorite complaint of patent lawyers is that one does not know what a patent actually covers until the Federal Circuit has opined on the question.
At the end of the day, as the Supreme Court appears to have recognized, there are good reasons to think carefully in any given circumstance about whether rules or standards work best. For this reason, if for no other, the Supreme Court’s intervention is welcome."