Patent Law Viewed Through an Evidentiary Lens: The Suggestion Test as a Rule of Evidence

The Federal Circuit\u27s recent nonobviousness jurisprudence has been the subject of much criticism. Reports from the Federal Trade Commission and the National Research Council and a pending petition for certiorari to the Supreme Court all conclude that the Federal Circuit has improperly relaxed the nonobviousness standard. Most of this criticism focuses on the Federal Circuit\u27s implementation of part of the nonobviousness inquiry - the suggestion test. The suggestion test queries whether a suggestion to make the invention existed before the invention\u27s creation. The Federal Circuit allegedly requires a suggestion to come solely from prior art references. The court ignores other evidence of undocumented suggestions that may exist in the knowledge of those skilled in the relevant technology or the nature of the problem being solved. This Article tests the validity of this criticism and finds that the Federal Circuit has not narrowed the suggestion test. By taking a novel look at the jurisprudence, the Article concludes that, instead, the court has adopted an evidentiary-like aspect to the suggestion test. Those cases where it appears the court is focusing only on the prior art are actually instances where the court is exercising an evidentiary aspect of the suggestion test. The suggestion test\u27s rule of evidence excludes undocumented evidence of suggestion that does not contain the requisite detail and analysis. This rule of evidence is tailored to adjust the level of detail and analysis required to correspond to the complexity of the technology at issue. As a result, the suggestion test\u27s rule of evidence helps to reduce overvaluation of suggestion evidence and the resulting, incorrect obviousness determinations. However, the rule may produce some erroneous nonobviousness determinations of its own, particularly at the United States Patent and Trademark Office, and thus should be relaxed in this context. Finally, this use of an evidentiary lens to look at, and evaluate, patent doctrine has application in patent law far beyond nonobviousness and the suggestion test

Patent Law Viewed Through an Evidentiary Lens: The Suggestion Test as a Rule of Evidence

The Federal Circuit\u27s recent nonobviousness jurisprudence has been the subject of much criticism. Reports from the Federal Trade Commission and the National Research Council and a pending petition for certiorari to the Supreme Court all conclude that the Federal Circuit has improperly relaxed the nonobviousness standard. Most of this criticism focuses on the Federal Circuit\u27s implementation of part of the nonobviousness inquiry - the suggestion test. The suggestion test queries whether a suggestion to make the invention existed before the invention\u27s creation. The Federal Circuit allegedly requires a suggestion to come solely from prior art references. The court ignores other evidence of undocumented suggestions that may exist in the knowledge of those skilled in the relevant technology or the nature of the problem being solved. This Article tests the validity of this criticism and finds that the Federal Circuit has not narrowed the suggestion test. By taking a novel look at the jurisprudence, the Article concludes that, instead, the court has adopted an evidentiary-like aspect to the suggestion test. Those cases where it appears the court is focusing only on the prior art are actually instances where the court is exercising an evidentiary aspect of the suggestion test. The suggestion test\u27s rule of evidence excludes undocumented evidence of suggestion that does not contain the requisite detail and analysis. This rule of evidence is tailored to adjust the level of detail and analysis required to correspond to the complexity of the technology at issue. As a result, the suggestion test\u27s rule of evidence helps to reduce overvaluation of suggestion evidence and the resulting, incorrect obviousness determinations. However, the rule may produce some erroneous nonobviousness determinations of its own, particularly at the United States Patent and Trademark Office, and thus should be relaxed in this context. Finally, this use of an evidentiary lens to look at, and evaluate, patent doctrine has application in patent law far beyond nonobviousness and the suggestion test

Counterclaims, the Well-Pleaded Complaint, and Federal Jurisdiction

This Article proceeds as follows: Part I of the Article begins by laying the statutory and constitutional foundation of arising under jurisdiction. The current connection between arising under jurisdiction and federal question jurisdiction is discussed. Part I also fully sets forth the well-pleaded complaint rule, and discusses removal jurisdiction, which is governed by the concept of arising under jurisdiction. As necessary background to understanding the Court\u27s reasoning in Holmes and why the case prompts a general discussion on federal jurisdiction implications, Part I concludes by defining a district court\u27s jurisdiction over patent cases, the Federal Circuit\u27s appellate jurisdiction over patent cases, and how these two areas of jurisdiction fit within the broader scheme of federal question jurisdiction. Part II of the Article focuses on the Court\u27s decision in Holmes and the basic holding of the case. The immediate ramifications of the Holmes decision on the Federal Circuit\u27s appellate jurisdiction are briefly discussed. Part II concludes by discussing what the Supreme Court said about the well-pleaded complaint rule in general in the Holmes decision. Part III of the Article discusses the implication of the well-pleaded complaint rule on a federal court\u27s original jurisdiction, removal jurisdiction, and exclusive federal jurisdiction over a federal law counterclaim. Part IV evaluates the policy implications of the wellpleaded complaint rule as applied to counterclaims. The rule\u27s ability to frustrate the purposes behind federal question jurisdiction is discussed. In addition, how the rule can disturb a plaintiffs or defendant\u27s legitimate interests and introduce inefficiency into the judicial process are examined. Part V of the Article discusses potential statutory solutions-ways in which the detrimental effects of the well-pleaded complaint rule may be prevented. As a final note, the Article suggests that the Federal Circuit\u27s appellate jurisdiction over patent cases be untied from federal district courts\u27 arising under jurisdiction to stop decisions unique to this specialized appellate court from visiting general questions of federal jurisdiction jurisprudence

Modernizing Patent Law\u27s Inequitable Conduct Doctrine

This Article\u27s main finding is that the inequitable conduct doctrine has the ability to improve patent quality as long as the inherent tendency to overcomply with the doctrine by overloading the USPTO with information is kept in check. The Article reaches this conclusion by proceeding in five parts. Part II describes the current thinking on the inequitable conduct doctrine, with particular focus on the major critiques of the doctrine and proposed legislative and administrative responses. Part III of the Article begins the construction of a fundamental, conceptual framework for the doctrine by explaining how it impacts both patent quality and patent examination. If properly calibrated, the doctrine can improve both the quality of the patent application (by increasing the patent attorney\u27s knowledge and care) and the quality of the examination (by acting as an information producer and verifier). The doctrine\u27s potential impact is not all positive. The tremendous incentive for applicants to overcomply can actually decrease patent quality. Part IV completes the conceptual framework by detailing how the doctrine, through the extreme legal and extra-legal costs it currently imposes, incentivizes inventors and, in particular, patent attorneys to overcomply by submitting all information, regardless of relevance, to the USPTO. Part V explains how this overcompliance negatively affects patent examination and the patent system by causing information overload that hampers the USPTO\u27s ability to operate effectively and by creating high compliance costs that price inventors out of the patent system. Finally, in Part VI, the Article uses this framework to suggest changes that maintain the positive effects of the doctrine on patent quality while minimizing overcompliance

The Individual Inventor Motif in the Age of the Patent Troll

The individual inventor motif has been part of American patent law since its inception. The question is whether the recent patent troll hunt has damaged the individual inventor\u27s image and, in turn, caused Congress, the United States Patent and Trademark Office (USPTO), and the courts to become less concerned with patent law\u27s impact on the small inventor. This Article explores whether there has been a change in attitude by looking at various sources from legislative, administrative, and judicial actors in the patent system, such as congressional statements and testimony in discussions of the recent proposed patent reform legislation, the USPTO \u27s two recently proposed sets of patent rules and responses to comments on those rules, and recent Supreme Court patent decisions. These sources indicate that the rhetoric of the motif has remained unchanged, but its substantive impact is essentially nil. The motif has done little to stave off the increasingly antiindividual- inventor changes in substantive patent law. This investigation also provides a broader insight into the various governmental institutions\u27 roles in patent law by illustrating how different institutions have responded-or not responded-to the use of the individual inventor motif in legal and policy arguments

Arising Under Jurisdiction and Uniformity in Patent Law

The law governing the Federal Circuit\u27s appellate jurisdiction was brought into question in Holmes Group, Inc. v. Vornado Circulation Systems, Inc. The Federal Circuit\u27s appellate jurisdiction over Vornado\u27s appeal rested solely on Vornado\u27s counterclaim alleging patent infringement by Holmes. Holmes\u27s complaint sought a declaratory judgment of no trade dress infringement and did not include any patent law claims. While the Federal Circuit found appellate jurisdiction over Vornado\u27s appeal based on the counterclaim of patent infringement, the Supreme Court disagreed. The Court focused on the language in 35 U.S.C. § 1338(a), which defines the Federal Circuit\u27s appellate jurisdiction by the statute\u27s reference in 35 U.S.C. § 1295(a)(1). The Court indicated that the arising under language in § 1338(a) invokes the well-pleaded complaint rule. The Court noted that the well pleaded complaint rule provides that whether a case aris[es] under federal law, or in this case patent law, must be determined from the plaintiff\u27s complaint. The Court therefore concluded that a counterclaim, such as Vornado\u27s, did not aris[e] under patent law because it was not contained within the plaintiff\u27s, in this case Holmes\u27s, complaint, and thus could not give the Federal Circuit appellate jurisdiction[...] The Supreme Court\u27s decision in Holmes presents significant questions about the scope of the Federal Circuit\u27s appellate jurisdiction and the removal and exclusive jurisdiction of federal district courts over patent law claims. This uncertainty threatens the uniformity in patent law that the Federal Circuit was charged with creating. This Article addresses these questions and concludes that the potential for non-uniformity resulting from the ruling in Holmes is real. The rationale underlying the Holmes decision will divert patent law counterclaims from the federal judicial system, not just the Federal Circuit\u27s appellate review. In addition, situations will likely arise where regional circuits revisit issues already decided by the Federal Circuit in light of the circuit\u27s pre-1982 case law. A body of state law on patent issues may also be developed. To prevent these situations from occurring, the effect of Holmes on the Federal Circuit\u27s appellate jurisdiction must be limited and regional circuits and state courts must look to the Federal Circuit for guidance on patent law issues. Just as the Federal Circuit gives proper deference to regional circuit decisions on non-patent law issues, regional circuits and state courts should give deference to the Federal Circuit on issues related to patent law. Additionally, legislative responses could provide an absolute solution to the problem presented by Holmes. Congress can amend § 1295(a) and § 1338 to return the Federal Circuit\u27s appellate jurisdiction, and federal district court jurisdiction, to its state before Holmes. This would ensure, even post-Holmes, that patent law claims are litigated at the federal level and reviewed by the Federal Circuit. This Article reaches these conclusions in the following manner. Part I of this Article begins by looking at the creation of the Federal Circuit, including the reasons Congress created a specialized appellate court for patent law. Part I proceeds to examine the development of the case law that defined the Federal Circuit\u27s appellate jurisdiction over patent law claims, up to the Supreme Court\u27s decision in Holmes. Part II of this Article examines, in-depth, the Supreme Court\u27s decision in Holmes. Part III attempts to further define the specific types of cases that must, under Holmes, be appealed to a regional circuit as opposed to being appealed to the Federal Circuit. The effect of Holmes on federal district court removal and exclusive jurisdiction over patent law claims will also be examined. To provide an empirical prospective, published Federal Circuit cases, since the Federal Circuit\u27s inception in 1982, will be reviewed to determine which of these cases would, under the Holmes decision, have gone to the regional circuit or stayed in state court. Part III also discusses the choice of law rules that regional circuits and state courts may adopt to handle the patent law claims they will review or decide. Part III also examines the non-uniformity and conflicts that will be created if regional circuits and state courts ignore the Federal Circuit\u27s case law and begin to develop their own, independent precedent on patent issues. Part III takes as an example specific areas of patent law, such as the patentability of business method patents, and looks to how different regional circuits and state courts may treat these patent law issues. Part IV focuses on the non-uniformity that the holding in Holmes creates. In particular, Part IV investigates the harm the result of Holmes will have on doctrinal stability and horizontal equity in patent law. Finally, Part V presents potential solutions to prevent this breach of uniformity in patent law post-Holmes, suggesting that regional circuits and state courts observe Federal Circuit law as controlling on patent law claims and that, in order to truly preserve patent law uniformity, legislation must be passed to restore the Federal Circuit\u27s appellate jurisdiction, and federal district court exclusive jurisdiction, to where it stood before the Supreme Court\u27s decision in Holmes

Nonobviousness and the Federal Circuit: An Empirical Analysis of Recent Case Law

This Article provides such an empirical study. The study examines all Federal Circuit cases over a four-year period considering the nonobviousness of a patent claim. Appeals from both patent infringement cases before district courts and pending patent applications and interferences before the United States Patent and Trademark Office (USPTO) are investigated. The study looks at the data in two levels of detail

Physicalism and Patent Theory

United States patent law\u27s view on the need for a physical embodiment of the invention, and the continued production and use of an embodiment, has varied over the last two centuries. In the early days, the requirement for \u27physicalism was high, with the inventor being required to actually reduce the invention to practice prior to patenting, and enforceability was tied to working the claimed invention. By the early 1900s, these requirements of physicalism disappeared. This changing view on physicalism speaks volumes as to which major patent theory the law emphasizes, with physicalism supporting the incentive to invent theory and the shift away from this physicalism bringing the disclosure theory to the forefront. This interplay between physicalism and patent theory, particularly regarding post-issuance physicalism, not only explains the past, it also describes the current discourse regarding, and legal reaction to, non-practicing entities ( NPEs ). Decisions such as eBay v. MercExchange, denying exclusivity to NPEs, once again emphasize physicalism and are interrelated to the incentive to invent and, in turn, downplay the disclosure theory and question its current validity as a patent policy goal

Patent Claim Interpretation Methodologies and Their Claim Scope Paradigms

The optimal scope of patent protection is an issue with which patent system observers have struggled for decades. Various patent doctrines have been recognized as tools for creating specific patent scopes and, as a result, implementing specific patent theories. One area of patent law that has not been addressed in the discussion on patent scope and theories is patent claim interpretation. This omission is particularly noteworthy because of the substantive role patent claims and the interpretation thereof play in the patent system, namely the framing of questions of patent infringement and validity. This Article will explore the not-yet-discussed relationship between claim interpretation methodology and patent scope. The discussion will focus on how changes in interpretation methodology affect patent scope, an aspect of methodologies that the Article identifies as their claim scope paradigm. Introducing the claim scope paradigm concept is mainly beneficial for two reasons. First, identifying the claim scope paradigm allows different interpretation methodologies to be evaluated as to their impact on the substantive function of patent claims. A claim scope paradigm criterion represents a significant and worthwhile departure from the current standard of certainty used by courts and commentators. Second, recognizing claim scope paradigms facilitates the use of claim interpretation methodology as a patent policy lever. Interpretation methodologies can be highly effective levers, having the ability to inject patent policy at the most basic level of the patent process