WASHINGTON D.C. - Bad patents undermine the confidence of our intellectual property system and empower those who would abolish it, two Progress & Freedom Foundation senior fellows have told the U.S. Supreme Court. Jim DeLong and Solveig Singleton have filed an amicus curiae in support of a petition for a writ of certiorari by the plaintiffs in KSR v. Teleflex. Twenty-four law professors also have filed a brief in favor of cert in the case, although respondent Teleflex denied permission to the filing of amicus briefs.

At issue is a patent held by the respondent that claims "invention" of the combination of two pre-existing designs -- an automobile adjustable accelerator pedal and an electronic throttle control. A district court ruled against the patent, finding that anyone with an undergraduate degree or modest industry experience "would have found it obvious" to connect the two devices. A Federal Circuit Court of Appeals panel vacated that judgment because the petitioners hadn't found objective evidence that anyone suggested the combination before the respondents filed their patent. (Demonstratives Inc. has created a video demonstrating prior art on this patent.) PFF Fellows are concerned that the Federal Circuit test for "nonobviousness" allows too many obvious patents through.

"PFF, precisely because of its fierce insistence on the importance of intellectual property rights and markets to the world economy, is concerned that the patent system not overreach by trying to protect too much," DeLong and Singleton say. "Extensions of the system to cover creations that are not true advances cause misallocation of resources and provide ammunition to those whose goal it is to undermine the basic idea of patents."

The Federal Circuit's departure from earlier Supreme Court precedents on obviousness, a circuit split, and the passage of a quarter-century since the Court last considered the obviousness standard, are all points in favor of cert. DeLong and Singleton agree, and believe the case is the perfect vehicle for High Court review because "every schoolchild knows what an accelerator pedal is." They add that the case reflects the growing importance of intellectual property to the economy, the unease about patent quality, and the fact that the current standard applied by the Federal Circuit causes harm.

"The Federal Circuit's test says, in essence, that all doubtful cases, all cases in the gray area, will be decided in favor of patentability. It has decided to run zero risk of rejecting a meritorious claim even at the cost of accepting numerous non-meritorious claims," DeLong and Singleton argue. "This is not sensible doctrine. Nor is it in accord with the statutory language or the precedents of this Court."

For example, DeLong and Singleton noted the difficulty the patent office faced in reviewing a patent awarded to a 5-year-old for the technique of making a playground swing move sideways. Fortunately, the examiners were able to find written proof of previous knowledge of such swinging and reverse that patent ruling. "The difficulty the [U.S. Patent and Trademark] office faced resulted from the fact that the Federal Circuit's standard forbade the examiners to take notice of what, literally, any child would know." The swing case was resolved by the invalidation of the patent, but many questionable patents are never reviewed.

The petitioners in KSR v. Teleflex have a broad base of support. In addition to DeLong and Singleton, twenty-four intellectual property law professors have filed their own brief supporting cert. Some of these professors -- including American U. 's Peter Jaszi, and U. of California 's Pamela Samuelson -- are at odds with DeLong and Singleton on intellectual property issues but share a common goal in this case. The counsel of record is George Washington U.'s Robert Brauneis, who can be reached at 202-994-6138 or rbrauneis@law.gwu.edu. The other lead author is DePaul U.'s Katherine Strandburg at 312-362-8536 or kstrandb@depaul.edu.

The Progress & Freedom Foundation is a market-oriented think tank that studies the digital revolution and its implications for public policy. It is a 501(c)(3) research & educational organization.