Talk about irony.  Three of the 12 judges on the Federal Circuit today opined that three of their brethren obviously erred by holding that "obviousness" of an invention rendered a patent claiming it invalid as a matter of law in Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348 (Fed. Cir. 2007) (see post).  Each wrote a separate dissenting opinion from the court’s denial of a petition for rehearing en banc.  Pfizer, Inc. v. Apotex, Inc., No. 06-1261 (Fed. Cir. May 22, 2007).  And one of the dissenters even cited the Supreme Court’s intervening decision on the obviousness doctrine in KSR Int’l Co. v. Teleflex, Inc., No. 04-1350 (U.S. Apr. 30, 2007) (post here), without suggesting that KSR conflicted with the panel’s opinion.

Blawgletter restrained ourselves from making fun of KSR‘s lengthy attempt to clarify obviousness.  Shouldn’t we have an obvious test for obviousness, we muttered under our breath.  But even we have our limits.  And the Federal Circuit’s internal split on how to apply a doctrine — which the Supreme Court held it may have misunderstood when it issued the panel decision — just exceeded them.

Barry Barnett

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