Not All Patents are Created Equal: Bias against Predictable Arts Patents in the Post-KSR Landscape
![handle is hein.journals/jointpro13 and id is 169 raw text is: NOT ALL PATENTS ARE CREATED EQUAL: BIAS
AGAINST PREDICTABLE ARTS PATENTS IN THE
POST-KSR LANDSCAPE
David Tseng*
INTRODUCTION
Investment in intellectual property is considered a shrewd business
strategy.1 However, companies that invest heavily in patenting the results of
research and development may later be surprised by their inability to generate
revenue from their patent portfolios. This is because those seeking to enforce
patents in the predictable arts may find themselves stymied by recent
developments in patent jurisprudence, especially with respect to the doctrine of
obviousness. By encouraging a common sense perspective and rejecting rigid
formulations, the Supreme Court in KSR International Co. v. Teleflex, Inc.2
unintentionally injected a significant measure of subjectivity and irregularity
into the obviousness analysis, which has led to an increase in the likelihood of a
predictable arts patent being found obvious due to the wide array of rationales
available to make such a conclusion. Another emerging trend in the post-KSR
landscape is that the Supreme Court's flexible approach in determining
obviousness has created a bias against patents in the predictable arts.
Part I of this paper defines the general contours between patents in the
predictable arts and patents in the unpredictable arts. Parts II and III discuss how
the holding of KSR and subsequent USPTO3 guidelines establish a bias against
predictable art patents. In Part IV, this Article will examine two ways in which
the bias against predictable arts patents manifests itself in patent invalidity
Copyright © 2014 David Tseng. Senior Attorney, Dorsey & Whitney LLP. A
special thanks to the editors of the Chicago-Kent Journal of Intellectual Property for their
feedback and suggestions. The author would also like to thank Professors Toshiko
Takenaka and Signe Naeve of the University of Washington School of Law for their
input.
Elizabeth D. Ferrill, Patent Investment Trusts: Let's Build a PIT to Catch Patent
Trolls, 6 N.C. J. L. & TECH. 367, 368 (2005) ([l]ntellectual property portfolios (of which
patents are a major part) have become valuable assets for businesses and important tools
in attracting investment and venture capital. Modern patents have an intrinsic value
beyond merely the right to exclude competitors-they serve as powerful marketing tools
and can have the same influence on a corporation's bottom line as tangible property
assets. In fact, today's intellectual property is a key corporate asset precisely because it
may be the primary driver of revenue.).
2 KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398 (2007).
3 USPTO refers to the United States Patent and Trademark Office.](ViewImageLocal?handle=hein.journals/jointpro13&div=11&collection=&method=preview&ext=.png&size=3)
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Not All Patents are Created Equal: Bias against Predictable Arts Patents in the Post-KSR Landscape
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