Tuesday, November 20, 2012

“The brightest heaven of invention”

One thing that I find very pleasant about writing briefs for patent litigators is the chance each project provides to get immersed in the magical argot associated with patent law. That doctrinal area seems peculiarly blessed with unique standards, tests, and theories, mostly invented by the extraordinarily smart and thoughtful judges who sit on the specialized Federal Circuit Court of Appeals. These unique features of patent law are captured in terms that can be utterly cryptic to the uninitiated. One of my favorites, “the objective factors for assessing non-obviousness,” was at the center of a recent Federal Circuit case, Transocean Offshore Deepwater Drilling, Inc. v. Maersk Drilling USA, Inc., No. 11-1555 (Fed. Cir. Nov. 15, 2012) (about which my pal at Blawgletter recently blogged).

The requirement that an invention be “non-obvious” may seem, well, obvious. Certainly, inventive litigators defending against patent infringement suits have developed all kinds of ways to assault a duly issued patent to try to show that the folks at the US Patent Office just made a big mistake. Just one of those ways is to try to show that the invention was “obvious.” And courts long ago concluded that an invention is not patent-worthy if the fact-finder concludes that it was, after all, “obvious.” So, even if an accused infringer is found to have infringed, the infringer is off the hook if the patent is deemed invalid on the basis of obviousness.

But the Federal Circuit has also developed a means for defending against the defense of obviousness. The “objective factors” that can be weighed to determine non-obviousness include evidence of (1) an invention’s commercial success; (2) that it received “industry praise;” (3) that it produced “unexpected results;” (4) that it prompted “copying” by competitors; (5) that the idea earned “industry skepticism” at the outset; (6) that the resulting technology resulted in “licensing” by those eager to use the invention; and (7)—my personal favorite—that it met a “long-felt but unsolved need.”

In a previous post, I discussed the fact that virtually all of Shakespeare’s plays involved plots and characters lifted from other sources, though combined in non-obvious ways. See http://truecomplaintshakespearelaw.blogspot.com/2012/08/shape-new-country-in-on-old-course.html. Moreover, I feel certain that Shakespeare could mount an effective defense of his work based on most of the objective factors of non-obviousness:

(1)   His work has certainly experienced commercial success—in his lifetime and for several centuries thereafter.

(2)   His plays have received praise from industry insiders, whether those “insiders” are countenanced as other literary giants who have been inspired by Shakespeare’s oeuvre or as academics who continue to find new things to marvel at in that same oeuvre;

(3)   His plays have produced “unexpected results,” in that even he never thought they would get performed after his death, let alone published, let alone interpreted in countless other media—like film, ballet, opera, sculpture, and this blawg!

(4)   His plays and sonnets have indeed been copied by competitors—with much of this copying being conscious acts of tribute, as with Kurosawa’s film Ran and Jane Smiley’s novel A Thousand Acres, both stunning transformations that “copy” King Lear.

(5)   The theater “industry” may not have been skeptical about Shakespeare’s work at the outset. But this is hard to test. Theater itself was a phenomenon about which there was great skepticism until its popularity resurfaced with a vengeance as Europe emerged from the Middle Ages, in large measure thanks to Billy Shakespeare.

(6)   The plays certainly resulted in much “licensing” for some time, never going out of print or off the stage—although now the works have long been in the public domain.

(7)   Shakespeare’s work met a “long-felt but unsolved need” we had for a monumental literary genius who could utilize the amazing expressive breadth of the English language and the unique power of theatrical performance.

I rest my case.

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