Matthew J. Brigham is a partner in the Intellectual Property (IP) Litigation practice group at Cooley Godward Kronish’s Palo Alto office. We sat down with him to talk about commercial aspects of IP litigation.

Q: Tell us a little bit about your specialization in IP and any recent noteworthy cases in that area?

A: I specialize in patent litigation in the high-tech sector, and I work with clients ranging from individual inventors to large multi-national companies. One of the most important recent cases in patent litigation is one everyone is still talking about and trying to get their hands around: KSR Int’l Co. v. Teleflex Inc.[1] (KSR). This case was about the “non–obviousness” requirement for patentable subject matter.[2]

The U.S. Court of Appeals for the Federal Circuit (Federal Circuit) was created as a special unified appeals court that hears all appeals from U.S. District Courts in patent cases. Prior to KSR, the Federal Circuit applied the Teaching, Suggestion, or Motivation Test (TSM Test) to determine non–obviousness. In order for a party, usually the defendant, to show that an invention was obvious, most judges and Courts required the showing of an explicit Teaching, Suggestion, or Motivation in the prior art that would lead one of ordinary skill in the art to the new invention or to combine multiple prior art references.[3]

In KSR, the Supreme Court rejected the TSM test as too formalistic and not the flexible, context–sensitive inquiry necessary in patent cases. Although the TSM test might be informative, the ultimate judgment must involve some level of common sense.

Q: What will be the eventual impact of KSR?

A: It is still not clear what kind of reaction we will see from the courts. However it will be interesting to see how the hindsight issue will be addressed under the new standard.

Q: Could you elaborate?

A: One of the main justifications for the TSM test was that it prevented Patent and Trademark Office examiners or courts from using improper hindsight when determining whether an invention is obvious. The old adage “hindsight is 20/20” applies to patents with particular force. There is a natural tendency to want to use hindsight; that is, to look at today’s state of the art and say, “Of course this patent is obvious!” That is not the proper approach, however. The question is not whether a patent is obvious in light of today’s state of the art technology, but whether it was obvious at the time of the invention.

One of the benefits of the TSM test was that it helped reduce hindsight bias. While it certainly had its downsides, and sometimes created artificial barriers to proving invalidity, requiring an explicit TSM helped keep the focus on what was known in the art at the time of invention. By eliminating the strict application of the TSM test, the Supreme Court took away a crutch to rely on without replacing it with any alternative test. Thus, one impact of KSR is an increased tension between common sense and hindsight bias in the determination of obviousness.

Q: Does KSR reflect any kind of trend in patent litigation?

A: Many people think it does. People tend to try to categorize court decisions as “defendant-friendly” or “plaintiff-friendly.” KSR is viewed as a defendant–friendly decision. Defendants accused of infringement now think they have an easier time showing patent invalidity through obviousness now as compared to the pre–KSR litigation landscape. Recently, there have been a couple other cases that have been viewed as “defendant friendly.” Previously, plaintiffs were somewhat able to assume they would get an injunction as a remedy in patent infringement cases. Issuing injunctions was almost automatic. The case of ebay v. MercExchange[4] changed this assumption.

Q: What happened in that case?

A: In eBay, the Supreme Court ruled that U.S. District Courts must engage in a close analysis of the facts of a patent infringement case before handing out an injunction. The standard four–factor equitable test[5] for an injunction must now be applied before a court can issue an injunction as a remedy for patent infringement. Thus, in crafting a judicial remedy, courts now consider a defendant’s potential hardship if it issues an injunction.

Q: What other cases have contributed to this perceived defendant–friendly trend in recent years?

A: Another significant case was In re Seagate Technology, LLC.[6] In the past, a plaintiff could seek treble damages for willful infringement if he could prove that an infringer had notice that his activities infringed the plaintiff’s patent. Defendants carried the burden to rebut this argument, and they typically did so by showing they consulted with registered patent attorneys and they relied on the advice given to them.

In re Seagate changed that standard. Now, it is the plaintiff’s burden to show by a preponderance of the evidence that the defendant was acting objectively reckless. Thus, the case raised the bar and made it much harder for plaintiffs to get treble damages. In each of these cases, the practical impacts are unknown. Will it mean more patents are found invalid? Will it mean damages and injunctions are granted less often? It’s too early to tell, and probably won’t be that easy to make broad pronouncements, but it will be fascinating to see how KSR, eBay, and In re Seagate alter the patent litigation landscape in the future.