One of the nation's top legal scholars on intellectual property has switched sides in a U.S. Supreme Court case that could decide how patents are granted.
Mark Lemley, a Stanford University professor and of counsel at Keker & Van Nest in San Francisco, initially asked the high court to hear KSR International Co. v. Teleflex Inc. But then, in October, Lemley filed a brief asking the Court to take no action in the case, which is scheduled for oral argument on Tuesday.
Lemley has already landed on the winning side of two high court patent fights this year. He filed an amicus brief supporting eBay Inc., which won its closely watched battle against MercExchange LLC in May. The next month he represented the defendant in LabCorp. v. Metabolite, persuading the Court to punt the case -- after it had already granted certiorari -- because of a procedural issue. His move in the current case could be a big boost to Teleflex, whose patent on an electronic gas pedal KSR is seeking to invalidate.
It's extremely rare, say Court observers, for a practitioner to change positions in a high court case. Roy Englert, a name partner at Robbins, Russell, Englert, Orserk & Untereiner in Washington, D.C., who has argued 16 cases before the Supreme Court, says the only time he can recall it happening was in 1989, when the U.S. solicitor general's office withdrew its support in a case it initially urged the Court to hear.
That's what happened with Lemley. In June he and 23 other law professors urged the Supreme Court to hear KSR's appeal. Then, in October, he and four different law professors signed on to an amicus brief siding with Teleflex. What happened? Lemley says that after he filed his June certiorari petition, the U.S. Court of Appeals for the Federal Circuit issued three decisions that made him change his mind. "If the Federal Circuit had issued those decisions two years ago, I would not have supported KSR's petition for cert," he says. He also notes that two new law review articles -- written by two of the professors who joined him on the Teleflex brief -- made him realize that the status quo doesn't need fixing.
The KSR case initially attracted the attention of reform-minded patent professors like Lemley, who believed that the Federal Circuit had been too loose with an important standard -- that patents should not cover obvious inventions. At the district court, KSR had argued that Teleflex's patent should be invalidated because it covered an obvious invention. Neither gas pedals nor electronic sensors are new technology, KSR argued. There was nothing innovative in combining the two. The court agreed, but the decision was reversed on appeal. The Federal Circuit ruled that because no one had suggested combining these two technologies in any written prior art, the invention was not obvious.
In their petition, Lemley and company argued that by relying so heavily on written prior art, the Federal Circuit had lowered the patent bar too far. Sometimes an invention is so obvious that no one ever even bothers to write about it, they said.
But in the October amicus brief, Lemley urged the Court not to mess with the Federal Circuit's current standard. "I still think there are obvious patents that slip through, but I think the Federal Circuit's test is the best we've got right now," Lemley now says.
That test is an attempt to overcome the big problem with the obviousness standard. That is, just about everything seems obvious in retrospect (that's why they call football fans Monday morning quarterbacks). When an invention -- like Teleflex's gas pedal -- combines two other inventions, this "hindsight effect" is particularly acute. In its test, the Federal Circuit looks at the prior art to see if there was ever any suggestion made to combine the inventions. If there wasn't, the patent stands. KSR and its supporters criticize the test as being too rigid, because it relies too heavily on written evidence.
Lemley changed his mind about this after reading a paper written by University of Richmond School of Law professor Christopher Cotropia, who found that the court does consider sources besides written prior art. Cotropia, who was a student of Lemley's at the University of Texas School of Law and cowrote the Teleflex brief, analyzed three years' worth of Federal Circuit decisions involving obviousness. (The Notre Dame Law Review plans on publishing his article in early 2007.) Lemley also looked at research done by Gregory Mandel, a professor at Albany Law School in New York. Mandel had 247 law student volunteers pose as jurors, and he split them into two groups. One group was told about an invention, and then learned the history of its discovery. This group was much more likely to see an invention as obvious. (It's like being told Bruce Willis's character is a ghost before sitting down to watch "The Sixth Sense.") The other group learned the invention's history first, and was less likely to see the invention as obvious.
In his paper Mandel asserts that "the hindsight problem pervades patent law to an extent not previously recognized." According to Mandel, the Federal Circuit's test is not too strict. In fact, Mandel says that almost no test may be too strict to get rid of hindsight bias. Mandel's study appears in the November issue of the Yale Journal of Law and Technology.
Both Mandel and Cotropia started their research prior to the KSR case. "I only heard of this case when the amicus brief from the law professors was filed last year," Cotropia says, noting that the Federal Circuit opinion in KSR was unpublished. But the results of their research have grown in importance since the Supreme Court took the case. The research has convinced Lemley that "there is a serious hindsight bias problem," he says. "But the Federal Circuit has actually done a decent job of distinguishing cases in which people come up with a plausible story for obviousness from those in which they don't."
Other patent law luminaries remain on KSR's side. Robert Merges, director of the Berkeley Center for Law & Technology, was one of the 24 academics who signed the cert petition, and he wrote an October amicus brief in favor of KSR. Merges is aware of the new research. He says that Mandel's experiment was a "very controlled laboratory experiment. As [Mandel] would tell you, it is always a leap of faith to go from a study to a proposal." Merges remains convinced of the need to tighten the Federal Circuit's obviousness standard. "Most everybody in the software industry thinks that the standards for patents have become so low that anyone could just about patent anything," he says.
Big high-tech companies such as Intel Corp., Cisco Systems Inc. and Microsoft Corp. have filed briefs in support of KSR. But Teleflex has an equally impressive list of amici: General Electric Co., 3M, The Procter & Gamble Co. and half a dozen other corporations.
Lemley's support, however, appears to have tipped the scale a bit in Teleflex's favor. Only 14 of the 24 law professors who supported KSR's cert petition signed on to Merges's brief. This is good news to Teleflex's counsel, Supreme Court veteran Thomas Goldstein: "In a highly specialized area of law, justices will care whether the leading experts in the field are on one side or the other," says the Akin Gump Strauss Hauer & Feld partner. "You would certainly much rather have him on your side than against you."
KSR's lawyer James Dabney, a partner at Fried, Frank, Harris, Shriver & Jacobson, says that the change doesn't weaken his client's position at all: "The solicitor general of the United States and the Patent and Trademark Office have filed a brief that strongly disagrees with Mr. Lemley's newly expressed views," he wrote in an e-mail.
Lemley says he has no stake in the game: "I don't really care who wins. My concern is that the Supreme Court not go overboard and throw out the test entirely in favor of a new test. I want them to be aware of these new studies, and that's one of the roles of the amicus brief."