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Motivation for the Federal Circuit Test - page 17 / 35





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The effect of this tradition on perceptions of the TSM test is substantial. Because decisions often fail to recite each element of the law, they provide an incomplete picture of what the law is. Consequently, any single opinion will usually expose only a limited number of facets of the TSM test. Read alone, a particular decision may imply the TSM test fails to appropriately resolve a different fact pattern. Read in conjunction with a limited number of other decisions, the TSM test could appear ad hoc and inconsistent with itself and other relevant decisions.

In contrast, if decisions recited each element of the law – even those elements not the focus of the particular case – then all of the facets of the TSM test would be exposed in a single writing. This would provide a complete picture of the TSM test with important nuances and explanations. The tendency of the court to write cursory opinions combined with the tendency not to cite important precedent makes it all the more difficult to gain a thorough and satisfying understanding of the workings of the TSM test.

“Insular” Jurisprudence

The third tradition well established in CCPA decisions is to cite almost exclusively CCPA decisions when discussing a point. This may seem a bit odd since the CCPA was only one of several courts considering patent issues. Each of the Circuits, and of course the Supreme Court, also considered patent issues on a regular basis. Given the number and variety of cases considered by these other courts, the frequency with which the CCPA cites these other courts appears to be extremely low. Two factors are likely responsible for this phenomenon – and arguably support its legitimacy.

First, the CCPA was the only specialist court for patents, literally working with them on a daily basis. The CCPA’s expertise in such matters gives its decisions and their rationales significant weight. In addition, the daily interaction with patent over the years gives the decisions of the CCPA a special continuity of development not found in any other venue. Second, the CCPA was the only court which considered administrative decisions of the patent office with regularity. Appellants would rarely seek redress from patent office decisions in circuit court. As such, the decisions of the CCPA were almost always significantly more closely aligned with subsequent cases, and accordingly, they provided more persuasive precedent.

This tradition only exacerbates the potential for misunderstanding the TSM test in light of the other traditions of failing to cite precedent and providing “cursory” decisions. Decisions of other appeallate courts generally cite precedent and recite all relevant legal doctrines. Had the CCPA been able to utilize these decisions more, then CCPA decisions would have had by incorporation more complete illustrations of the TSM test.

Caselaw Development

Two notable events occurred during this period. With the Patent Act of 1952, § 103 codified the Hotchkiss “invention” requirement as “nonobviousness.” While this no doubt brought greater clarity to the “invention/obviousness” analysis, it did not


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